What form paragraphs should examiners use for restriction requirements?
According to MPEP 818.01(b), examiners should use specific form paragraphs when issuing restriction requirements: For general restriction requirements: Form paragraph 8.21 For election of species: Form paragraph 8.01 or 8.02 The MPEP states: “All requirements for restriction, other than those containing only an election of species, should include form paragraph 8.21. For election of species,…
Read MoreHow does the USPTO define “serious burden” in the context of restriction requirements?
The USPTO defines “serious burden” in the context of restriction requirements based on several factors. According to MPEP 803, a serious burden on the examiner may be prima facie shown if the examiner shows by appropriate explanation either: Separate classification Separate status in the art A different field of search The MPEP states: “Where, however,…
Read MoreHow does the USPTO define “independent inventions” in the context of restriction requirements?
How does the USPTO define “independent inventions” in the context of restriction requirements? The USPTO defines “independent inventions” in the context of restriction requirements as inventions that are unrelated. According to MPEP 806.06: “Inventions as disclosed and claimed are independent if there is no disclosed relationship between the inventions, that is, they are unconnected in…
Read MoreWhat are the two main aspects of a requirement to restrict in patent applications?
According to MPEP 808, every requirement to restrict has two main aspects: (A) The reasons why each invention as claimed is either independent or distinct from the other(s) (B) The reasons why there would be a serious search and/or examination burden on the examiner if restriction is not required The MPEP states: “Every requirement to…
Read MoreHow are linking claims treated during patent examination?
During patent examination, linking claims receive special treatment. The MPEP 809 states: “Linking claims must be examined with, and thus are considered part of, the invention elected. When all claims directed to the elected invention are allowable, should any linking claim be allowable, the restriction requirement between the linked inventions must be withdrawn.” This means…
Read MoreWhat are transitional applications under 37 CFR 1.129?
Transitional applications are those filed on or before June 8, 1995, with an effective U.S. filing date of June 8, 1992, or earlier. These applications are subject to special provisions under 37 CFR 1.129, which allows for examination of more than one independent and distinct invention in certain cases. According to the MPEP, “37 CFR…
Read MoreWhat are the exceptions to the transitional application provisions?
There are three main exceptions to the transitional application provisions under 37 CFR 1.129(b)(1). An applicant will not be permitted to have additional inventions examined in an application if: (A) The requirement was made in the application or an earlier application relied on under 35 U.S.C. 120, 121, or 365(c) prior to April 8, 1995;…
Read MoreWhat is the time limit for filing a petition in patent prosecution?
The time limit for filing a petition in patent prosecution is generally two months from the action being contested. MPEP 1201 refers to the relevant regulation: “As 37 CFR 1.181(f) states that any petition not filed within 2 months from the action complained of may be dismissed as untimely” However, for petitions regarding restriction requirements,…
Read MoreHow are subcombinations usable together treated in restriction requirements?
Subcombinations disclosed as usable together in a single combination are subject to restriction if they meet specific criteria. According to MPEP § 806.05(j), subcombinations are distinct if: They do not overlap in scope They are not obvious variants At least one subcombination has separate utility Form Paragraph 8.16 is used for restricting between subcombinations and…
Read MoreWhen is a subcombination considered essential to a combination in patent claims?
A subcombination is considered essential to a combination when the combination as claimed requires the details of the subcombination as separately claimed. The MPEP describes this situation as follows: “Where a combination as claimed requires the details of a subcombination as separately claimed, there is usually no evidence that combination ABsp is patentable without the…
Read More