MPEP § 809 — MPEP § 809
Current through: 2022-07-01

809-Linking Claims 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0800 

 Section 809 
 

 
 
 
 
 
 809 Linking Claims [R-08.2012]

 There are a number of situations which arise in which an application has
 claims to two or more properly divisible inventions, so that a requirement to restrict the
 claims of the application to one would be proper, but presented in the same case are one or
 more claims (generally called 
 "linking"
 
 
 claims) which, if allowable, would require rejoinder of
 the otherwise divisible inventions. See MPEP § 821.04 for information pertaining
 to rejoinder practice.
 

 Linking claims and the inventions they link together are usually either
 all directed to products or all directed to processes (i.e., a product claim linking
 properly divisible product inventions, or a process claim linking properly divisible
 process inventions). The most common types of linking claims which, if allowable, act to
 prevent restriction between inventions that can otherwise be shown to be divisible, are 
 

 
 (A) genus claims linking species claims; and

 (B) subcombination claims linking plural combinations.

 
 Where an application includes claims to distinct inventions as well as
 linking claims, restriction can nevertheless be required. 
 

 The linking claims must be examined with, and thus are considered part of,
 the invention elected. When all claims directed to the elected invention are allowable,
 should any linking claim be allowable, the restriction requirement between the linked
 inventions must be withdrawn. Any claim(s) directed to the nonelected invention(s),
 previously withdrawn from consideration, which depends from or requires all the limitations
 of the allowable linking claim must be rejoined and will be fully examined for
 patentability. Where the requirement for restriction in an application is predicated upon
 the nonallowability of generic or other type of linking claims, applicant is entitled to
 retain in the application claims to the nonelected invention or inventions. Where such
 withdrawn claims have been canceled by applicant pursuant to the restriction requirement,
 upon the allowance of the linking claim(s), the examiner must notify applicant that any
 canceled, nonelected claim(s) which depends from or requires all the limitations of the
 allowable linking claim may be reinstated by submitting the claim(s) in an amendment. Upon
 entry of the amendment, the amended claim(s) will be fully examined for patentability. See
 MPEP §
 821.04 for additional information regarding rejoinder. 
 

 
 809.01 [Reserved]

 

 

 
 809.02 Election of Species Required [R-07.2022]

 

 
 809.02(a) Election of Species Required [R-07.2022]

 Where restriction between species is appropriate (see
 MPEP §
 808.01(a)) the examiner should send a letter including only
 a restriction requirement or place a telephone requirement to restrict (the latter
 being encouraged). See MPEP § 812.01 for telephone practice in restriction
 requirements.
 

 Action as follows should be taken:

 
 (A) Identify generic claims or indicate that no generic claims are
 present. See MPEP § 806.04(d) for definition of a generic
 claim.
 

 (B) Clearly identify each (or in aggravated cases at least
 exemplary ones) of the disclosed species, to which claims are to be
 restricted . The species are preferably identified as the species
 of figures 1, 2, and 3 or the species of examples I, II, and III, respectively.
 In the absence of distinct figures or examples to identify the several species,
 the mechanical means, the particular material, or other distinguishing
 characteristic of the species should be stated for each species identified. If
 the species cannot be conveniently identified, the claims
 may be grouped in accordance with the species to which they are restricted.
 Provide reasons why the species are independent or distinct.
 

 (C) Applicant should then be required to elect a single disclosed
 species under 35 U.S.C. 121 , and advised as to the requisites of a
 complete reply and their rights under 37 CFR 1.141 .
 

 
 To be complete, a reply to a requirement made according to this
 section should include a proper election along with a listing of all claims readable
 thereon, including any claims subsequently added.
 

 In those applications wherein a requirement for restriction is
 accompanied by an action on the elected claims, such action will be considered to be
 an action on the merits and the next action may be made final where appropriate in
 accordance with MPEP §
 706.07(a) .
 

 For treatment of claims held to be drawn to nonelected inventions,
 see MPEP §
 821 et seq .
 

 ¶ 8.01 Election of Species; Species Claim(s) Present

 This application contains claims directed to the following patentably
 distinct species [1] . The species are independent or distinct because
 [2] . In addition, these species are not obvious variants of each other based
 on the current record.
 

 Applicant is required under 35 U.S.C. 121 to elect a single disclosed
 species, or a single grouping of patentably indistinct species, for prosecution on the merits
 to which the claims shall be restricted if no generic claim is finally held to be allowable.
 Currently, [3] generic.
 

 There is a serious search and/or examination burden for the patentably
 distinct species as set forth above because at least the following reason(s) apply:
 [4] . 
 

 Applicant is advised that the
 reply to this requirement to be complete must include (i) an
 election of a species to be examined even though the requirement may be traversed
 ( 37 CFR
 1.143 ) and (ii) identification of the claims encompassing the
 elected species or grouping of patentably indistinct species , including any claims
 subsequently added. An argument that a claim is allowable or that all claims are generic is
 considered nonresponsive unless accompanied by an election.
 

 The election may be made with or without traverse. To
 preserve a right to petition, the election must be made with traverse. If the reply does not
 distinctly and specifically point out supposed errors in the election of species requirement,
 the election shall be treated as an election without traverse. Traversal must be presented at
 the time of election in order to be considered timely. Failure to timely traverse the
 requirement will result in the loss of right to petition under 37 CFR 1.144 . If claims
 are added after the election, applicant must indicate which of these claims are readable on
 the elected species or grouping of patentably indistinct species.
 

 Should applicant traverse on the ground that the species, or groupings of
 patentably indistinct species from which election is required, are not patentably distinct,
 applicant should submit evidence or identify such evidence now of record showing them to be
 obvious variants or clearly admit on the record that this is the case. In either instance, if
 the examiner finds one of the species unpatentable over the prior art, the evidence or
 admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) 
 of the other species.
 

 Upon the allowance of a generic claim,
 applicant will be entitled to consideration of claims to additional species which depend from
 or otherwise require all the limitations of an allowable generic claim as provided by
 37 CFR
 1.141 .
 

 Examiner Note:
 
 1. In bracket 1, identify the
 species and/or grouping(s) of patentably indistinct species from which an election is to
 be made. The species may be identified as the species of figures 1, 2, and 3, for
 example, or the species of examples I, II, and III, respectively. Where the election
 requirement identifies a grouping of patentably indistinct species, applicant should not
 be required to elect a specific species within that grouping.
 

 2. In bracket 2 insert the
 reason(s) why the species or grouping(s) of species are independent or distinct. See
 MPEP §
 806.04(b) , § 806.04(f) and § 806.04(h) . For
 example, insert --the claims to the different species recite the mutually exclusive
 characteristics of such species--, and provide a description of the mutually exclusive
 characteristics of each species or grouping of species.
 

 3. In bracket 3 insert the
 appropriate generic claim information.
 

 4. In bracket 4 insert the applicable reason(s) why there is a
 serious search and/or examination burden as listed below. 
 -For a serious search burden list one or more of the
 following:
 

 --the species or groupings of patentably indistinct species
 have acquired a separate status in the art in view of their different
 classification;
 

 --the species or groupings of patentably indistinct species
 have acquired a separate status in the art due to their recognized divergent subject
 matter; and/or
 

 --the species or groupings of patentably indistinct species
 require a different field of search (e.g., searching different classes/subclasses or
 electronic resources, or employing different search strategies or search
 queries).
 

 -For a serious examination burden explain the reason, 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) are relevant to one species or grouping of patentably
 indistinct species that are not relevant to the other species or grouping(s) of
 patentably indistinct species.
 
 
 

 5. This form paragraph does not
 need to be followed by form paragraph 8.21 .
 
 
 

 ¶ 8.02 Requiring an Election of Species; No Species Claim
 Present
 

 Claim(s) [1] is/are generic to the following disclosed
 patentably distinct species: [2] . The species are independent or distinct because
 [3] . In addition, these species are not obvious variants of each other based
 on the current record.
 

 Applicant is required under 35 U.S.C. 121 to elect a single disclosed
 species, or a single grouping of patentably indistinct species, for prosecution on the merits
 to which the claims shall be restricted if no generic claim is finally held to be
 allowable.
 

 There is a serious search and/or examination burden for the patentably
 distinct species as set forth above because at least the following reason(s) apply:
 [4] 

 Applicant is advised that the reply to this requirement to be complete
 must include (i) an election of a species or a grouping of
 patentably indistinct species to be examined even though the requirement
 may be traversed (37 CFR 1.143 ) and (ii)
 identification of the claims encompassing the elected species or grouping of patentably
 indistinct species , including any claims subsequently added. An argument that a
 claim is allowable or that all claims are generic is considered nonresponsive unless
 accompanied by an election.
 

 The election may be made with or without traverse. To preserve a right to
 petition, the election must be made with traverse. If the reply does not distinctly and
 specifically point out supposed errors in the election of species requirement, the election
 shall be treated as an election without traverse. Traversal must be presented at the time of
 election in order to be considered timely. Failure to timely traverse the requirement will
 result in the loss of right to petition under 37 CFR 1.144 . If claims are added after
 the election, applicant must indicate which of these claims are readable on the elected
 species or grouping of patentably indistinct species. 
 

 Should applicant traverse on the ground that the species, or groupings of
 patentably indistinct species from which election is required, are not patentably distinct,
 applicant should submit evidence or identify such evidence now of record showing them to be
 obvious variants or clearly admit on the record that this is the case. In either instance, if
 the examiner finds one of the species unpatentable over the prior art, the evidence or
 admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) 
 of the other species.
 

 Upon the allowance of a generic claim, applicant will be entitled to
 consideration of claims to additional species which depend from or otherwise require all the
 limitations of an allowable generic claim as provided by 37 CFR 1.141 .
 

 Examiner Note:
 
 1. This form paragraph should be used for the election of species
 requirement described in MPEP § 803.02 (Markush group) and MPEP § 808.01(a) 
 where only generic claims are presented.
 

 2. In bracket 1, insert the claim number(s).

 3. In bracket 2, clearly identify the species and/or grouping(s) of
 patentably indistinct species from which an election is to be made. The species may be
 identified as the species of figures 1, 2, and 3, for example, or the species of
 examples I, II, and III, respectively. Where the election requirement identifies a
 grouping of patentably indistinct species, applicant should not be required to elect a
 specific species within that grouping.
 

 4. In bracket 3 insert the reason(s) why the species or groupings of
 species as disclosed are independent or distinct. See MPEP § 806.04(b) ,
 §
 806.04(f) and MPEP § 806.04(h) . For example, insert
 --as disclosed the different species have mutually exclusive characteristics for each
 identified species--, and provide a description of the mutually exclusive
 characteristics of each species or grouping of species. 
 

 5. In bracket 4 insert the applicable reason(s) why there is a
 serious search and/or examination burden as listed below. 
 -For a serious search burden list one or more of the
 following:
 

 --the species or groupings of patentably indistinct species
 have acquired a separate status in the art in view of their different
 classification;
 

 --the species or groupings of patentably indistinct species
 have acquired a separate status in the art due to their recognized divergent subject
 matter; and/or
 

 --the species or groupings of patentably indistinct species
 require a different field of search (e.g., searching different classes/subclasses or
 electronic resources, or employing different search strategies or search
 queries).
 

 -For a serious examination burden explain the reason, 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) are relevant to one species or grouping of patentably
 indistinct species that are not relevant to the other species or grouping(s) of
 patentably indistinct species.
 
 
 

 6. This form paragraph does not need to be
 followed by form paragraph 8.21 .
 
 
 

 

 

 
 809.03 Restriction Between Linked Inventions [R-07.2022]

 Where an application includes two or more otherwise properly divisible
 inventions that are linked by a claim which, if allowable, would require rejoinder (See
 MPEP §
 809 and § 821.04 ), the examiner should require
 restriction, either by a written Office action that includes only a restriction
 requirement or by a telephoned requirement to restrict (the latter being encouraged).
 Examiners should use form paragraph 8.12 to make restrictions involving
 linking claims when the linking claim is other than a genus claim linking species
 inventions. When the linking claim is a genus claim linking species inventions,
 examiners should use form paragraph 8.01 or 8.02 (see
 MPEP §
 809.02(a) ).
 

 ¶ 8.12 Restriction, Linking Claims

 Claim [1] link(s) inventions [2] and [3] . The restriction requirement [4] the linked inventions is subject to the nonallowance of the linking claim(s), claim [5] . Upon the indication of allowability of the linking claim(s), the restriction requirement as to the linked inventions shall be withdrawn and any claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s)
 will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104. Claims that require all the limitations of an allowable linking claim will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier.
 Amendments submitted after final rejection are governed by 37 CFR 1.116 ; amendments submitted after allowance are governed by 37 CFR 1.312 . 
 

 Applicant(s) are advised that if any claim presented in a divisional
 application is anticipated by, or includes all the limitations of, the allowable linking
 claim, such claim may be subject to provisional statutory and/or nonstatutory double patenting
 rejections over the claims of the instant application. 
 

 Where a restriction requirement is withdrawn, the provisions of
 35 U.S.C.
 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170
 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 . 
 

 Examiner Note:
 
 1. This form paragraph must be included in any restriction requirement with at least one linking claim present.

 2. In bracket 4, insert either --between-- or --among--.

 3. In bracket 5, insert the claim number(s) of the linking claims.

 4. See related form paragraphs 8.45 , 8.46 and 8.47 .
 
 
 

 Where the requirement for restriction in an application is predicated
 upon the nonallowability of generic or other type of linking claims, applicant is
 entitled to retain in the application claims to the nonelected invention or
 inventions.
 

 For traverse of a restriction requirement with linking claims, see
 MPEP §
 818.01(d) .
 

 For treatment of claims held to be drawn to nonelected inventions, see
 MPEP §
 821 et seq .
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 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 20:50:53