How does an examiner handle restricted inventions in a Notice of Allowability?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. When dealing with restricted inventions in a Notice of Allowability, the examiner follows specific procedures: The examiner identifies which claims are directed to the elected invention Non-elected claims that depend from or require all limitations of an allowable claim are rejoined The examiner cancels any remaining non-elected claims The MPEP 1302.03 states: “If the application contains claims directed to more than one invention… the examiner should include a statement in the Office action that identifies which claims are directed to the elected invention.” This ensures clarity regarding which claims are being allowed and which are being canceled due to restriction. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Notice of Allowability Required for Application MPEP 1302.03 Examiner’s Amendment Must Refer to Claim Numbers MPEP 1302.04(g) Recommended Date of Communication Must Be Included in Notice MPEP 1302.03 Recommended Prompt Notification for Allowability Required MPEP 1302.03 Recommended Prompt Notice to Applicant on Allowability Avoids Unnecessary Appeal MPEP 1302.03 Permitted Interviews After Notice of Allowability or PTAB Transfer Required MPEP 1002.02(c) Notice of Appeal Requirement for Twice-Rejected Claims MPEP 1204 Permitted No Notice of Appeal with RCE MPEP 1204 Prohibited Amendment Requirement for Notice of Appeal and Brief MPEP 1204 Premature Notice of Appeal When Reconsideration Requested MPEP 1204 Other Related FAQs 5 FAQs Collapse What information is included in the examiner&#8217;s reasons for allowance? What is the purpose of Form PTO-37 in patent application allowance? What is the purpose of Form PTOL-37 in patent application allowance? Why ...