What is Form Paragraph 8.19 and how is it used in patent examination?

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.

Form Paragraph 8.19 is a standardized text used by patent examiners to communicate a restriction requirement between apparatus and product claims. According to MPEP 806.05(g), it states:

“¶ 8.19 Apparatus and Product Made Inventions [1] and [2] are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another materially different apparatus (MPEP § 806.05(g)).”

Examiners use this form paragraph to clearly communicate the basis for a restriction requirement between apparatus and product claims. They must provide specific examples to support the restriction, which are inserted into the bracketed areas of the form paragraph.