What is the “utility” requirement for a subcombination in patent restriction practice?

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.

What is the “utility” requirement for a subcombination in patent restriction practice?

The utility requirement for a subcombination is a crucial aspect of patent restriction practice. According to MPEP 806.05(a):

“The subcombination has utility by itself or in other combinations.” (MPEP 806.05(a))

This means that for a subcombination to be considered distinct from the combination:

• It must have a practical use on its own, or
• It must be capable of being used in other combinations beyond the one claimed.

This requirement ensures that the subcombination is not merely an arbitrary part of the combination but has independent patentable significance. Examiners will assess this utility when determining whether to issue a restriction requirement between a combination and subcombination.