MPEP § 818 — MPEP § 818
Current through: 2022-07-01

818-Election and Reply 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 0800 

 Section 818 
 

 
 
 
 
 
 818 Election and Reply [R-07.2022]

 Election is the designation by applicant of the one of two or more
 inventions or patentably distinct species, or of the group of patentably indistinct
 species, that will be prosecuted in the application. See MPEP § 803.02 .
 

 When two or more independent and distinct inventions are
 presented for examination, the examiner may make a restriction requirement if a serious
 search and/or examination burden exists. In the reply to the restriction requirement,
 applicant must elect one invention for examination. If applicant wishes to traverse the
 restriction requirement, the reply must also include a traversal with specific reasons why
 applicant believes the restriction requirement is in error. See 37 CFR 1.111 and
 MPEP §
 818.01 . Applicant must make their own election; the examiner will
 not make the election for the applicant.
 

 Election becomes fixed when the claims in an application have
 received an action on their merits by the Office. If, after receiving an action on the
 merits of an invention, one or more properly divisible additional inventions are
 subsequently presented for examination, the examiner may deem the examined invention to be
 the invention elected by original presentation. See MPEP § 818.02(a) .
 

 
 818.01 Election in Reply to a Restriction Requirement:
 Express [R-07.2022]
 

 
 37 CFR 1.143 Reconsideration of requirement. 

 If the applicant disagrees with the requirement for
 restriction, he may request reconsideration and withdrawal or modification of the
 requirement, giving the reasons therefor. (See § 1.111 ). In requesting
 reconsideration the applicant must indicate a provisional election of one invention
 for prosecution, which invention shall be the one elected in the event the
 requirement becomes final. The requirement for restriction will be reconsidered on
 such a request. If the requirement is repeated and made final, the examiner will at
 the same time act on the claims to the invention elected.
 

 

 Election in reply to a requirement for restriction may be
 made either with or without an accompanying traverse of the requirement. A complete
 reply to a restriction requirement must include an election even if applicant traverses
 the requirement. 
 

 A traverse is a request for reconsideration of a
 requirement to restrict that must include a written statement of the reasons for
 traverse, distinctly and specifically pointing out the supposed errors upon which the
 applicant relies for concluding that the requirement is in error. The absence of any
 statement indicating whether the requirement to restrict is traversed or the failure to
 provide reasons for traverse will be treated as an election without traverse.
 

 Where a rejection or objection is included with a
 restriction requirement, applicant, besides making a proper election, must also
 distinctly and specifically point out any supposed errors in the examiner’s rejection or
 objection, or amend and argue that as amended the objection or rejection is moot. See
 37 CFR
 1.111 .
 

 Applicant must make their own election; the examiner will
 not make the election for the applicant. See 37 CFR 1.142 and 37 CFR 1.143 .
 

 
 818.01(a) Reply Must be Complete [R-07.2015]

 As indicated in the first sentence of 37 CFR 1.143 ,
 the traverse to a requirement for restriction must be complete as required by
 37 CFR
 1.111(b) . Under this rule, the applicant is required to
 specifically point out the reason(s) on which he or she bases his or her
 conclusion(s) that a requirement to restrict is in error. A mere broad allegation
 that the requirement is in error does not comply with the requirement of
 37 CFR
 1.111 . Thus the required provisional election (see
 MPEP §
 818.01(b) ) becomes an election without traverse if
 accompanied by an incomplete traversal of the requirement for restriction.
 

 

 
 818.01(b) Election is Required, Even When Requirement Is
 Traversed [R-07.2015]
 

 As noted in the second sentence of 37 CFR 1.143 , a
 provisional election must be made even if the requirement is traversed.
 

 All requirements for restriction, other than those
 containing only an election of species, should include form paragraph
 8.21 . For
 election of species, form paragraph 8.01 or 8.02 should be used. These form paragraphs include
 the above notice.
 

 

 
 818.01(c) Traverse is Required To Preserve Right of
 Petition [R-07.2022]
 

 
 37 CFR 1.144 Petition from requirement for restriction. 

 After a final requirement for restriction, the
 applicant, in addition to making any reply due on the remainder of the action, may
 petition the Director to review the requirement. Petition may be deferred until
 after final action on or allowance of claims to the invention elected, but must be
 filed not later than appeal. A petition will not be considered if reconsideration
 of the requirement was not requested (see § 1.181 ).
 

 

 To preserve the right to petition from the requirement
 for restriction, including an election of species requirement, all errors to be
 relied upon in the petition must be distinctly and specifically pointed out in a
 timely filed traverse by the applicant. The petition may be deferred until after
 final action on or allowance of the claims to the elected invention. In any event,
 the petition must not be filed later than the filing date of the notice of appeal. If
 applicant does not distinctly and specifically point out supposed errors in the
 restriction requirement, the election should be treated as an election without
 traverse and be so indicated to the applicant by use of form paragraph
 8.25.02 .
 

 ¶ 8.25.02 Election Without Traverse Based on Incomplete Reply

 Applicant’s election of [1] in the reply filed on 
 [2] is acknowledged. Because applicant did not distinctly and specifically point out
 the supposed errors in the restriction requirement, the election has been treated as an
 election without traverse ( MPEP § 818.01(a) ).
 

 

 

 
 818.01(d) Traverse of Restriction Requirement With Linking
 Claims [R-07.2015]
 

 Regardless of the presence of a linking claim, a
 proper traverse must include a written statement of the reasons for traverse,
 distinctly and specifically pointing out the supposed errors upon which the applicant
 relies for his or her conclusion that the requirement is in error. If restriction is
 made final following consideration of a traverse, the right to petition is preserved
 even if all linking claims are canceled. When a final restriction requirement is
 contingent on the nonallowability of the linking claims, applicant may petition from
 the requirement under 37 CFR 1.144 without waiting for
 a final action on the merits of the linking claims or applicant may defer his or her
 petition until the linking claims have been finally rejected, but not later than the
 notice of appeal. See 37 CFR 1.144 and
 MPEP §
 818.01(c) . 
 

 An election combined with an argument that the linking
 claim is allowable is not a traversal of the restriction requirement. The Office
 considers such a response to be a concession that restriction is proper if the
 linking claim is not allowable. If the linking claim is allowable, the restriction is
 improper and should be withdrawn. If the Office allows the linking claim, the
 restriction requirement must be withdrawn and claims to all linked inventions that
 depend from or otherwise include all the limitations of the allowable linking claim
 must be acted upon.
 

 

 

 
 818.02 Election Other Than Express [R-07.2015]

 Election may be made in ways other than by explicitly or expressly
 identifying the elected invention or in reply to a requirement as set forth in
 MPEP
 § 818.02(a) and §
 818.02(d) .
 

 
 818.02(a) Election By Originally Presented Claims [R-07.2015]

 Where claims to another invention are properly added and entered in
 the application before the earlier of the mailing of a first restriction requirement
 or the mailing of a first Office action on the merits, those claims, along with the
 ones presented upon filing the application, will be considered originally presented
 claims for purposes of restriction only.
 

 The claims originally presented and acted upon by the Office on
 their merits determine the invention elected by an applicant in the application, and
 in any request for continued examination (RCE) filed for the application.
 Subsequently presented claims to an invention other than that acted upon should be
 treated as provided in MPEP § 821.03 .
 

 For reissue practice, see MPEP Chapter
 1400 .
 

 

 
 818.02(b) Generic Claims Only — No Election of Species; Linking Claims
 Only – No Election of Invention [R-07.2022]
 

 Where only generic claims are first presented and prosecuted in an
 application in which no election of a single species of that genus or of a group of
 patentably indistinct species has been required, and applicant later presents species
 claims to two or more independent or distinct species of the invention, the examiner
 may require applicant to elect a single species or of a group of patentably
 indistinct species. The practice of requiring election of species in cases with only
 generic claims is discussed in MPEP § 808.01(a) . Where only linking
 claims are first presented and prosecuted in an application in which no election of a
 single linked invention has been made, and applicant later presents claims to two or
 more linked, independent or distinct inventions, the examiner may require applicant
 to elect a single invention.
 

 

 
 818.02(c) Election By Optional Cancelation of Claims [R-07.2015]

 Where applicant claims two or more independent or distinct
 inventions and as a result of amendment to the claims, he or she cancels the claims
 to one or more of such inventions, leaving claims to one invention, and such claims
 are acted upon by the examiner, the claimed invention thus acted upon is elected.
 

 

 
 818.02(d) Election By Cancelation of Claims, Lacking
 Express Election Statement [R-07.2015]
 

 If applicant’s reply to a requirement for restriction
 does not expressly state the invention elected, but cancels claims to all but one of
 the inventions, the remaining invention will be deemed to be the elected
 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