What options does an applicant have when facing a restriction requirement for product, process of making, and process of using claims?

When an application contains claims to a product, process of making, and process of using, the applicant may face a restriction requirement. According to MPEP 806.05(i): “Where an application contains claims to a product, claims to a process specially adapted for (i.e., not patentably distinct from, as defined in MPEP § 806.05(f)) making the product,…

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Does a restriction requirement in a parent application carry over to a continuation application?

No, a restriction requirement made in a parent application does not automatically carry over to a continuation, continuation-in-part (CIP), or divisional application. The MPEP 819 cites a Federal Circuit decision: “See Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004) (An original restriction requirement in an earlier…

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What happens to the restriction requirement after rejoinder?

When rejoinder occurs, the restriction requirement is typically withdrawn, either partially or fully. According to MPEP 821.04: “The requirement for restriction between the rejoined inventions must be withdrawn.” However, it’s important to note that the withdrawal of the restriction requirement can have implications for potential double patenting issues. The MPEP states: “Any claim(s) presented in…

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What does “restriction becomes proper at a later stage” mean in patent prosecution?

In the context of patent prosecution, the phrase “restriction becomes proper at a later stage” refers to a situation where circumstances change during the examination process, making a previously improper restriction requirement now appropriate. This concept is addressed in MPEP 811.03, which states: “Where a requirement to restrict is made and thereafter withdrawn as improper,…

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How can an applicant respond to a restriction requirement?

When faced with a restriction requirement, an applicant has several options for response, as outlined in MPEP 817. The key elements of a proper response include: Electing an invention to be examined Identifying the claims encompassing the elected invention Optionally, traversing the requirement Form Paragraph 8.21 in the MPEP provides guidance on the applicant’s response…

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How can an applicant respond to a restriction requirement in a design patent application?

When responding to a restriction requirement in a design patent application, an applicant has several options: Elect one group of designs for prosecution without traverse. Elect one group of designs for prosecution with traverse, providing arguments against the restriction. Petition to review the requirement. If electing with traverse, the MPEP advises: “If a response to…

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