MPEP § 822 — MPEP § 822
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0800 

 Section 822 
 

 
 
 
 
 
 822 Claims to Inventions That Are Not Patentably Distinct in Plural
 Applications of Same Applicant or Assignee [R-07.2022]
 

 
 37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other
 applications. 

 *****

 
 (f) Applications containing patentably indistinct claims. Where two
 or more applications filed by the same applicant or assignee contain patentably
 indistinct claims, elimination of such claims from all but one application may be
 required in the absence of good and sufficient reason for their retention during
 pendency in more than one application.
 

 
 *****

 

 Where claims in two or more applications filed by the same
 applicant or assignee are patentably indistinct, a complete examination should be made of
 the claims of each application and all appropriate rejections should be entered in each
 application, including rejections based upon prior art. The claims of each application may
 also be rejected on the grounds of provisional double patenting based on the claims of the
 other application whether or not any claims avoid the prior art. Where appropriate, the
 same prior art may be relied upon in each of the applications. See also
 MPEP §
 804.01 .
 

 The provisional double patenting rejection should continue to
 be made by the examiner in each application as long as there are patentably indistinct
 claims in more than one application unless that provisional double patenting rejection is
 the only rejection remaining in one of the applications. See MPEP § 1490 when the
 provisional double patenting rejection is the only rejection remaining in at least one
 application.
 

 See MPEP §
 804.03 for conflicting subject matter, different inventors,
 common ownership.
 

 See MPEP §
 608.01(m) for rejection of one claim over another in the same
 application.
 

 See MPEP §
 2190 , subsection II, for res judicata. 

 See MPEP §
 709.01 for one application in interference.
 

 See MPEP §
 806.04(h) to § 806.04(i) for species and genus in
 separate applications.
 

 Wherever appropriate, such conflicting claims should be moved to a single
 application. This is particularly true where the two or more applications are due to, and
 consonant with, a requirement to restrict which the examiner now considers to be
 improper.
 

 Form paragraph 8.29 should be used when the conflicting claims are
 identical or conceded by applicant not to be patentably distinct.
 

 ¶ 8.29 Patentably Indistinct Claims, Copending Applications

 Claim [1] of this application is patentably indistinct from
 claim [2] of Application No. [3] . Pursuant to 37 CFR
 1.78(f) , when two or more applications filed by the same applicant or
 assignee contain patentably indistinct claims, elimination of such claims from all but one
 application may be required in the absence of good and sufficient reason for their retention
 during pendency in more than one application. Applicant is required to either cancel the
 patentably indistinct claims from all but one application or maintain a clear line of
 demarcation between the applications. See MPEP § 822 .
 

 

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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