What happens if I add claims for a different invention after receiving an Office action?

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.

If you add claims for a different invention after receiving an Office action, the examiner will likely require you to restrict the claims to the previously claimed invention. This is outlined in 37 CFR 1.145, which states:

“If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144.”

The examiner will typically use form paragraph 8.04 to notify you of this requirement, explaining that the newly submitted claims are directed to an invention that is independent or distinct from the originally claimed invention.