What factors must an examiner consider before making a late restriction requirement?
When considering a late restriction requirement (i.e., after an action on the merits), an examiner must take into account specific factors. According to MPEP 811: “Before requiring restriction of claims previously examined on the merits, the examiner must consider whether there will be a serious search and/or examination burden if restriction is not required.” This…
Read MoreWhen should an examiner examine all claims despite potential distinctness?
An examiner should examine all claims on their merits, even if they include claims to independent or distinct inventions, when the search and examination can be made without serious burden. The MPEP 803 clearly states: “If the search and examination of all the claims in an application can be made without serious burden, the examiner…
Read MoreHow does the examiner determine if a Markush claim is too broad?
How does the examiner determine if a Markush claim is too broad? An examiner determines if a Markush claim is too broad by assessing whether the claim encompasses a large number of independent and distinct inventions. According to MPEP 803.02: “If the members of the Markush group are sufficiently few in number or so closely…
Read MoreHow can a serious search burden be demonstrated in a restriction requirement?
A serious search burden on the examiner can be prima facie shown through appropriate explanation of: Separate classification Separate status in the art A different field of search The MPEP 803 states: “For purposes of the initial requirement, a serious search burden on the examiner may be prima facie shown by appropriate explanation of separate…
Read MoreWhat are the criteria for a proper restriction requirement?
There are two main criteria for a proper requirement for restriction between patentably distinct inventions: The inventions must be independent or distinct There must be a serious search and/or examination burden on the examiner if restriction is not required As stated in MPEP 803: “There are two criteria for a proper requirement for restriction between…
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