Under what circumstances might an examiner permit a shift to claim another invention?
While applicants generally cannot shift from claiming one invention to another as a matter of right, examiners have some discretion in permitting such shifts. The MPEP 819 provides guidance on when an examiner might allow a shift:
“While applicant, as a matter of right, may not shift from claiming one invention to claiming another, the examiner is not precluded from permitting a shift. The examiner is most likely to do so where the shift results in no additional burden, and particularly where the shift reduces work by simplifying the issues.”
This suggests that examiners may be more inclined to permit a shift if it simplifies the examination process or doesn’t create additional work. However, this is at the examiner’s discretion and not a right of the applicant.
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