How does the USPTO determine if inventions are “not connected in design, operation, or effect”?
The United States Patent and Trademark Office (USPTO) uses specific criteria to determine if inventions are “not connected in design, operation, or effect” as outlined in MPEP 806. This determination is crucial for establishing distinctness or independence between claimed inventions. Here’s how the USPTO approaches this:
- Design: Inventions are not connected in design if they have different structures, components, or arrangements that are not mere obvious variations of each other.
- Operation: Inventions are not connected in operation if they function or perform their tasks in fundamentally different ways.
- Effect: Inventions are not connected in effect if they produce different results or solve different problems.
The MPEP states:
“Where inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) – § 806.06, the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required.“
This means that examiners must not only identify the lack of connection in design, operation, or effect but also justify why examining these inventions together would pose a serious burden. Factors considered in determining serious burden include:
- Different classification
- Separate status in the art
- Divergent fields of search
- Different prior art applicability
Applicants should be aware that even if inventions share some common elements, they may still be considered not connected if they meet the above criteria for distinctness or independence.
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