MPEP § 808 — MPEP § 808
Current through: 2022-07-01

808-Reasons for Insisting Upon Restriction 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0800 

 Section 808 
 

 
 
 
 
 
 808 Reasons for Insisting Upon Restriction [R-07.2022]

 Every requirement to restrict has two aspects: (A) the reasons (as
 distinguished from the mere statement of conclusion) why each invention as
 claimed is either independent or distinct from the other(s); and (B) the
 reasons why there would be a serious search and/or examination burden on the examiner if
 restriction is not required, i.e., the reasons for insisting upon restriction therebetween
 as set forth in the following sections.
 

 
 808.01 Reasons for Holding of Independence or Distinctness [R-08.2012]

 The particular reasons relied on by the examiner for holding that the
 inventions as claimed are either independent or distinct should be concisely stated. A
 mere statement of conclusion is inadequate. The reasons upon which the conclusion is
 based should be given.
 

 For example, relative to a combination and a subcombination thereof,
 the examiner should point out the reasons why he or she considers the subcombination to
 have utility by itself or in other combinations, and why he or she considers that the
 combination as claimed does not require the particulars of the subcombination as
 claimed. 
 

 Each relationship of claimed inventions should be similarly treated and
 the reasons for the conclusions of distinctness or independence set forth. Form
 paragraphs 8.01 , 8.02 , and 8.14 -
 8.20.02 may be used as appropriate to explain why the
 inventions as claimed are independent or distinct. See MPEP § 806.05 -
 § 806.06 .
 

 
 808.01(a) Species [R-07.2022]

 Where there is no disclosure of a relationship between species (see
 MPEP §
 806.04(b) ), they are independent inventions. A requirement
 for restriction is permissible if there is a patentable difference between the
 species as claimed and there would be a serious search and/or examination burden on
 the examiner if restriction is not required. See MPEP § 803 and
 § 808.02 . 
 

 Where there is a relationship disclosed between species, such
 disclosed relation must be discussed and reasons advanced leading to the conclusion
 that the disclosed relation does not prevent restriction, in order to establish the
 propriety of restriction.
 

 When a requirement for restriction between either independent or
 distinct species is made, applicant must elect a single disclosed species even if
 applicant disagrees with the examiner’s restriction requirement.
 

 Election of species should not be required between claimed species that are
 considered clearly unpatentable (obvious) over each other. In making a
 requirement for restriction in an application claiming plural species, the examiner
 should group together species considered clearly unpatentable over each other.
 

 Election of species may be required prior to a search on the merits
 (A) in applications containing claims to a plurality of species with no generic
 claims, and (B) in applications containing both species claims and generic or Markush
 claims.
 

 In applications where only generic claims are presented, restriction
 cannot be required unless the generic claims recite or encompass such a multiplicity
 of species that an unduly extensive and burdensome search would be necessary to
 search the entire scope of the claim. See MPEP § 803.02 and
 §
 809.02(a) . If applicant presents species claims to more
 than one patentably distinct species of the invention after an Office action on only
 generic claims, with no restriction requirement, the Office may require the applicant
 to elect a single species for examination.
 

 In all applications where a generic claim is found allowable, the
 application should be treated as indicated in MPEP § 809 and § 821.04(a) . See
 MPEP §
 803.02 and § 809.02(a) for guidance regarding
 how to require restriction between species.
 

 

 

 
 808.02 Establishing Burden [R-07.2022]

 Where, as disclosed in the application, the several inventions claimed
 are related, and such related inventions are not patentably distinct as claimed,
 restriction under 35
 U.S.C. 121 is never proper ( MPEP § 806.05 ). If
 applicant voluntarily files claims to such related inventions in different applications,
 double patenting may be held.
 

 Where the inventions as claimed are shown to be independent or distinct
 under the criteria of MPEP § 806.05(c) - § 806.06 , the examiner, in order to
 establish reasons for insisting upon restriction, must explain why there would be a
 serious search and/or examination burden on the examiner if restriction is not required.
 In order to demonstrate a serious search burden, the examiner must show by appropriate
 explanation one of the following:
 

 
 (A) Separate classification thereof : This shows that each invention has
 attained recognition in the art as a separate subject for inventive effort, and
 also a separate field of search. Patents need not be cited to show separate
 classification.
 

 (B) A separate status in the art when they are classifiable together :
 Even though they are classified together, each invention can be shown to have
 formed a separate subject for inventive effort when the examiner can show a
 recognition of separate inventive effort by inventors. Separate status in the art
 may be shown by citing patents which are evidence of such separate status, and
 also of a separate field of search.
 

 (C) A different field of search : Where it is necessary to search for one
 of the inventions in a manner that is not likely to result in finding art
 pertinent to the other invention(s) (e.g., searching different classes/subclasses
 or electronic resources, or employing different search queries), a different field
 of search is shown, even though the two are classified together. The indicated
 different field of search must in fact be pertinent to the type of subject matter
 covered by the claims. Patents need not be cited to show different fields of
 search.
 

 
 Where, however, the classification is the same and the field of search
 is the same and there is no clear indication of separate future classification and field
 of search, no reasons exist for dividing among independent or related inventions.
 

 To demonstrate serious examination burden separate from a
 serious search burden, the examiner must show by appropriate explanation that the
 inventions are likely to raise serious examination issues, such as non-prior art issues
 under 35 U.S.C.
 101 , pre-AIA 35 U.S.C. 112 , first
 paragraph and/or 35 U.S.C. 112(a) . In this situation,
 a serious examination burden may exist where issues relevant to one invention are not
 relevant to the other invention. 
 

 

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 801-Introduction 

 802-Basis for Restriction Practice in Statute and Rules 
 802.01-Meaning of “Independent” and “Distinct” 

 802.02-Definition of Restriction 

 
 

 803-Restriction — When Proper 
 803.01-Review by Examiner with at Least Partial Signatory Authority 

 803.02-Election of Species Requirements – Markush Claims 

 803.03-Transitional Applications 
 803.03(a)-Transitional Application — Linking Claim Allowable 

 803.03(b)-Transitional Application — Generic Claim Allowable 

 
 

 803.04-Nucleotide Sequences 

 803.05-Reissue Application Practice 

 
 

 804-Definition of Double Patenting 
 804.01-Prohibition of Nonstatutory Double Patenting Rejections Under 35 U.S.C. 121 

 804.02-Avoiding a Double Patenting Rejection 

 804.03-Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement 

 804.04-Submission to Technology Center Director 

 804.05-Impact of Patent Term Extension under 35 U.S.C. 156 on Nonstatutory Double Patenting 

 
 

 805-Effect of Improper Joinder in Patent 

 806-Determination of Distinctness or Independence of Claimed Inventions 
 806.01-Compare Claimed Subject Matter 

 806.02-[Reserved] 

 806.03-Single Embodiment, Claims Defining Same Essential Features 

 806.04-Genus and/or Species Inventions 
 806.04(a)-[Reserved] 

 806.04(b)-Species May Be Independent or Related Inventions 

 806.04(c)-[Reserved] 

 806.04(d)-Definition of a Generic Claim 

 806.04(e)-Claims Limited to Species 

 806.04(f)-Restriction Between Mutually Exclusive Species 

 806.04(g)-[Reserved] 

 806.04(h)-Species Must Be Patentably Distinct From Each Other 

 806.04(i)-Generic Claims Presented In a Separate Application After Issuance of Species Claims 

 
 

 806.05-Related Inventions 
 806.05(a)-Combination and Subcombination 

 806.05(b)-[Reserved] 

 806.05(c)-Criteria of Distinctness Between Combination and Subcombination 

 806.05(d)-Subcombinations Usable Together 

 806.05(e)-Process and Apparatus for Its Practice 

 806.05(f)-Process of Making and Product Made 

 806.05(g)-Apparatus and Product Made 

 806.05(h)-Product and Process of Using 

 806.05(i)-Product, Process of Making, and Process of Using 

 806.05(j)-Related Products; Related Processes 

 
 

 806.06-Independent Inventions 

 
 

 807-Patentability Report Practice Has No Effect on Restriction Practice 

 808-Reasons for Insisting Upon Restriction 
 808.01-Reasons for Holding of Independence or Distinctness 
 808.01(a)-Species 

 
 

 808.02-Establishing Burden 

 
 

 809-Linking Claims 
 809.01-[Reserved] 

 809.02-Election of Species Required 
 809.02(a)-Election of Species Required 

 
 

 809.03-Restriction Between Linked Inventions 

 
 

 810-Action on the Merits 

 811-Time for Making Requirement 
 811.01-[Reserved] 

 811.02-New Requirement After Compliance With Preceding Requirement 

 811.03-Repeating After Withdrawal Proper 

 811.04-Proper Even Though Grouped Together in Parent Application 

 
 

 812-Who Should Make the Requirement 
 812.01-Telephone Restriction Practice 

 
 

 813-[Reserved] 

 814-Indicate Exactly How Application Is To Be Restricted 

 815-Make Requirement Complete 

 816-[Reserved] 

 817-Outline of Letter for Restriction Requirement 

 818-Election and Reply 
 818.01-Election in Reply to a Restriction Requirement: Express 
 818.01(a)-Reply Must be Complete 

 818.01(b)-Election is Required, Even When Requirement Is Traversed 

 818.01(c)-Traverse is Required To Preserve Right of Petition 

 818.01(d)-Traverse of Restriction Requirement With Linking Claims 

 
 

 818.02-Election Other Than Express 
 818.02(a)-Election By Originally Presented Claims 

 818.02(b)-Generic Claims Only — No Election of Species; Linking Claims Only – No Election of Invention 

 818.02(c)-Election By Optional Cancelation of Claims 

 818.02(d)-Election By Cancelation of Claims, Lacking Express Election Statement 

 
 

 
 

 819-Office Generally Does Not Permit Shift 

 820-[Reserved] 

 821-Treatment of Claims Held To Be Drawn to Nonelected Inventions 
 821.01-After Election With Traverse 

 821.02-After Election Without Traverse 

 821.03-Claims for Different Invention Added After an Office Action 

 821.04-Rejoinder 
 821.04(a)-Rejoinder Between Product Inventions; Rejoinder Between Process Inventions 

 821.04(b)-Rejoinder of Process Requiring an Allowable Product 

 
 

 
 

 822-Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee 

 823-Unity of Invention Under the Patent Cooperation Treaty 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:44