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When rejoinder occurs, the restriction requirement is typically withdrawn, either partially or fully. According to MPEP 821.04:
“The requirement for restriction between the rejoined inventions must be withdrawn.”
However, it’s important to note that the withdrawal of the restriction requirement can have implications for potential double patenting issues. The MPEP states:
“Any claim(s) presented in a divisional application that are anticipated by, or rendered obvious over, the claims of the parent application may be subject to a double patenting rejection when the restriction requirement is withdrawn in the parent application.”
Applicants should be aware that once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable, which may affect the ability to use the safe harbor provision against double patenting rejections.