What are the rules for claiming multiple inventions in a single patent application?
The rules for claiming multiple inventions in a single patent application are primarily governed by 37 CFR 1.141. This regulation outlines the conditions under which multiple inventions can be claimed in one national application.
According to 37 CFR 1.141(a):
“Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form (§ 1.75) or otherwise include all the limitations of the generic claim.”
This rule allows for claiming multiple species of an invention in a single application, provided there’s a generic claim covering all species and the species claims are properly dependent or include all limitations of the generic claim.
Additionally, 37 CFR 1.141(b) addresses situations involving product, process of making, and process of use claims:
“Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.”
This provision outlines the conditions under which different categories of claims can be maintained in a single application or when they may be subject to a restriction requirement.
To learn more: