MPEP § 803 — MPEP § 803
Current through: 2022-07-01

803-Restriction — When Proper 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0800 

 Section 803 
 

 
 
 
 
 
 803 Restriction — When Proper [R-07.2022]

 Under the statute, the claims of an application may properly be required to
 be restricted to one of two or more claimed inventions only if they are able to support
 separate patents and they are either independent ( MPEP § 802.01 , § 806.06 , and
 § 808.01 ) or distinct ( MPEP § 806.05 - § 806.05(j) ).
 

 If the search and examination of all the claims in an application can be
 made without serious burden, the examiner must examine them on the merits, even though they
 include claims to independent or distinct inventions.
 

 I. CRITERIA FOR RESTRICTION BETWEEN PATENTABLY DISTINCT INVENTIONS There are two criteria for a proper requirement for restriction between
 patentably distinct inventions:
 

 
 (A) The inventions must be independent (see MPEP § 802.01 ,
 §
 806.06 , § 808.01 ) or distinct as claimed
 (see MPEP §
 806.05 - § 806.05(j) ); and
 

 (B) There would be a serious search and/or examination burden on the
 examiner if restriction is not required (see MPEP § 803.02 ,
 § 808 , and § 808.02 ).
 

 II. GUIDELINES Examiners must provide reasons and/or examples to support conclusions,
 but need not cite documents to support the restriction requirement in most cases.
 

 Where plural inventions are capable of being viewed as related in two
 ways, both applicable criteria for distinctness must be demonstrated to support a
 restriction requirement.
 

 If there is an express admission that the claimed inventions would have
 been obvious over each other within the meaning of 35 U.S.C. 103 , restriction should
 not be required. In re Lee, 199 USPQ 108 (Comm’r Pat. 1978).
 

 For purposes of the initial requirement, a serious search burden on the
 examiner may be prima facie shown by appropriate explanation of
 separate classification, or separate status in the art, or a different field of search
 as defined in MPEP
 § 808.02 . Similarly, a serious examination burden, for
 example, may be prima facie shown by appropriate explanation of
 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) relevant to one invention that are not relevant to the
 other invention. A prima facie showing of serious search and/or
 examination burden may be rebutted by appropriate showings or evidence by the applicant.
 Insofar as the criteria for restriction practice relating to Markush claims is
 concerned, the criteria is set forth in MPEP § 803.02 . Insofar as the criteria
 for restriction or election practice relating to claims to genus-species, see
 MPEP
 § 806.04 - § 806.04(i) and § 808.01(a) .
 

 
 803.01 Review by Examiner with at Least Partial Signatory
 Authority [R-07.2015]
 

 Since requirements for restriction under 35 U.S.C. 121 are
 discretionary with the Director, it becomes very important that the practice under this
 section be carefully administered. Notwithstanding the fact that this section of the
 statute apparently protects the applicant against the dangers that previously might have
 resulted from compliance with an improper requirement for restriction, IT STILL REMAINS
 IMPORTANT FROM THE STANDPOINT OF THE PUBLIC INTEREST THAT NO REQUIREMENT BE MADE WHICH
 MIGHT RESULT IN THE ISSUANCE OF TWO PATENTS FOR THE SAME INVENTION. See
 MPEP §
 804.01 . Therefore, to guard against this possibility, only an
 examiner with permanent full signatory authority or temporary
 full signatory authority may sign final Office actions
 containing a final requirement for restriction. An examiner with permanent
 partial signatory authority or temporary
 partial signatory authority may sign non-final Office actions
 containing a final requirement for restriction.
 

 

 
 803.02 Election of Species Requirements – Markush Claims [R-07.2022]
 
 I. MARKUSH CLAIMS A “Markush” claim recites a list of alternatively useable members.
 In re Harnisch, 631 F.2d 716, 719-20, 206 USPQ 300, 303 (CCPA
 1980); Ex parte Markush, 1925 Dec. Comm'r Pat. 126, 127 (1924).
 The listing of specified alternatives within a Markush claim is referred to as a
 Markush group or a Markush grouping. Abbott Labs v. Baxter Pharmaceutical
 Products, Inc., 334 F.3d 1274, 1280-81, 67 USPQ2d 1191, 1196 (Fed. Cir.
 2003)(citing to several sources that describe Markush groups). 
 

 When examining a Markush claim, the examiner may
 generally choose to require a provisional election of species from among patentably
 indistinct species or patentably indistinct groups of species. See subsection III,
 below. The applicant’s election serves as a starting point for the search and
 examination of the claim. 
 

 See MPEP §
 2117 for a general discussion of Markush claims, guidance
 and examples regarding the determination of whether a Markush grouping is proper, and
 rejections on the basis that a claim contains an improper Markush grouping. A
 rejection based on an improper Markush grouping should be made in an Office action on
 the merits. In certain circumstances, both a provisional election of species
 requirement and an improper Markush grouping rejection may apply to the same claim. 
 

 See MPEP § 2111.03 , subsection II, and
 MPEP §
 2173.05(h) for a discussion of Markush claims and
 compliance with the definiteness requirement of 35 U.S.C.
 112(b) .
 

 II. PROPER MARKUSH
 GROUPING Pursuant to the Supplementary Examination
 Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of
 Related Issues in Patent Applications ( “Supplementary
 Guidelines” ), 76 Fed. Reg. 7162 (February 9, 2011), a Markush grouping
 is proper if: (1) the members of the Markush group share a “single structural
 similarity,” and (2) the members share a common use. Id. (citing
 In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA
 1980)). 
 

 Where a Markush grouping describes part of a
 combination or process, the members following “selected from the group consisting of”
 (or a similar introductory phrase) must be substitutable, one for the other, with the
 expectation that the same intended result would be achieved. Multilayer
 Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d
 1350, 1357, 119 USPQ2d 1773, 1779 (Fed. Cir. 2016)(“It is generally understood that …
 the members of the Markush group … are alternatively usable for the purposes of the
 invention … .”)(citations omitted). Where a Markush grouping describes part of a
 chemical compound, regardless of whether the claim is limited to a compound per se or
 the compound is recited as part of a combination or process, the members following
 “selected from the group consisting of” (or similar introductory phrase) need not
 share a community of properties themselves; the propriety of the grouping is
 determined by a consideration of the compound as a whole. See
 Harnisch, 631 F.2d at 722, 206 USPQ at 305 (“in determining the
 propriety of a Markush grouping the compounds must be considered as wholes and not
 broken down into elements or other components”). 
 

 See MPEP §
 2117 for guidance and examples regarding the determination
 of whether a Markush grouping is proper. 
 

 In accordance with the principles of compact
 prosecution, if the examiner determines that one or more claims appear to include an
 improper Markush grouping (see MPEP § 2117 ), the examiner should
 require the applicant to elect a species. Note that if a written provisional election
 of species requirement must be made separate from the first Office action on the
 merits, it should not include a rejection on the basis of an improper Markush
 grouping. Any appropriate improper Markush grouping rejection should be made in an
 Office action on the merits. 
 

 III. ELECTION OF SPECIES PRACTICE FOR
 MARKUSH CLAIMS A. Overview Markush claims recite a plurality of alternatively usable
 substances or members. In most cases, a recitation by enumeration is used because
 there is no appropriate or true generic language. A Markush claim may include
 independent and distinct inventions. This is true where two or more of the members
 are so unrelated and diverse that a prior art reference anticipating the claim
 with respect to one of the members would not render the claim obvious under
 35 U.S.C.
 103 with respect to the other member(s). In applications
 containing a Markush claim that encompasses at least two independent or distinct
 inventions, the examiner may require a provisional election of a single species
 (or grouping of patentably indistinct species) prior to examination on the merits,
 with one exception. If the members of a proper Markush group are sufficiently few
 in number or so closely related that a search and examination of the entire claim
 can be made without serious burden, the examiner must examine all the members of
 the Markush group in the claim on the merits, even though they may be directed to
 independent and distinct inventions. In such a case, the examiner will not require
 provisional election of a single species. See MPEP §
 808.02 

 An election of species requirement is a type of
 restriction requirement. An examiner should set forth a requirement for election
 of a single disclosed species (or a grouping of patentably indistinct species) in
 a Markush claim using form paragraph 8.01 when claims limited to species are present
 or using form paragraph 8.02 when no species claims are present. See
 MPEP §
 808.01(a) and § 809.02(a) . If a Markush claim
 depends from or otherwise requires all the limitations of another generic or
 linking claim, see MPEP § 809 .
 

 Following election, the Markush claim will be
 examined fully with respect to the elected species and further to the extent
 necessary to determine patentability. Note that where a claim reads on multiple
 species, only one species needs to be taught or suggested by the prior art in
 order for the claim to be anticipated or rendered obvious. See, e.g.,
 Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288,
 1298, 92 USPQ2d 1163, 1171 (Fed. Cir. 2009)(the entire element is disclosed by the
 prior art if one alternative in the Markush group is in the prior art). 
 

 If the Markush claim is not allowable, the provisional election
 will be given effect and examination will be limited to the Markush claim and
 claims to the elected species, with claims drawn to species patentably distinct
 from the elected species held withdrawn from further consideration. As an example,
 in the case of an application with a Markush claim drawn to the compound X-R,
 wherein R is a radical selected from the group consisting of A, B, C, D, and E,
 the examiner may require a provisional election of a single species, XA, XB, XC,
 XD, or XE. The Markush claim would then be examined fully with respect to the
 elected species and any species considered to be clearly unpatentable over the
 elected species. 
 

 If on examination the elected species is found to
 be anticipated or rendered obvious by prior art, the Markush claim and claims to
 the elected species will be rejected, and claims to the nonelected species will be
 held withdrawn from further consideration.
 

 If the examiner determines that the elected species is allowable
 over the prior art, the examination of the Markush claim will be extended. If
 prior art is then found that anticipates or renders obvious the Markush claim with
 respect to a nonelected species, the Markush claim shall be
 rejected; claims to the nonelected species would still be held withdrawn from
 further consideration. The prior art search will not be extended unnecessarily to
 cover all nonelected species, and need not be extended beyond a proper Markush
 grouping. See subsection III.C.2, below, for additional guidance. 
 

 Should applicant, in response to a rejection of a
 Markush claim, overcome the rejection by amending the Markush claim to exclude the
 species anticipated or rendered obvious by the prior art, the amended Markush
 claim will be examined again. The examination will be extended to the extent
 necessary to determine patentability of the Markush claim. In the event prior art
 is found during this examination that anticipates or renders obvious the amended
 Markush claim, the claim will be rejected and the action can be made final unless
 the examiner introduces a new ground of rejection that is neither necessitated by
 applicant’s amendment of the claims nor based on information submitted in an
 information disclosure statement filed during the period set forth in
 37 CFR
 1.97(c) with the fee set forth in 37 CFR
 1.17(p) . See MPEP § 706.07(a) . Amendments
 submitted after the final rejection further restricting the scope of the claim may
 be denied entry if they do not comply with the requirements of 37 CFR
 1.116 . See MPEP § 714.13 .
 

 B. Provisional Election of
 Species If a claim that includes a Markush grouping reads on
 two or more patentably distinct inventions, a provisional election of species
 requirement may be made at the examiner’s discretion. When making such a requirement,
 the examiner will require the applicant to elect a species or group of patentably
 indistinct species for initial search and examination. The examiner should not
 require provisional election between species that are not patentably distinct, or
 when the Markush group is proper and there would be no serious burden if the species
 were searched and examined together. The examiner should not invite the applicant to
 elect any group of species that would clearly be rejectable either as an improper
 Markush grouping or under 35 U.S.C. 112(a) if presented in
 a separate claim.
 

 In accordance with current practice, when an examiner
 chooses to require a provisional election of species, in most cases the examiner
 should call the applicant to request a telephonic election. See MPEP § 812.01 . If
 the applicant elects by telephone, form paragraph 8.23 should be used in the next Office
 action on the merits. The examiner should note whether the election was made with or
 without traverse. If a rejection on the basis of an improper Markush grouping is to
 be made, it should be done in the first Office action on the merits with the written
 provisional election of species requirement.
 

 If a written provisional election of species
 requirement is made prior to the first Office action on the merits, it should not
 include a rejection on the basis of an improper Markush grouping. Any appropriate
 improper Markush grouping rejection should be made in an Office action on the merits.
 If during prosecution a new claim is added that includes an improper Markush
 grouping, or an existing claim is amended to include an improper Markush grouping,
 the examiner may require provisional election of species at that time, in the same
 action as any appropriate rejections . Include form paragraph
 8.23.01 
 if the applicant declined to elect by telephone. 
 

 C. Initial Examination of Elected
 Species 1. Rejection of Claims to Elected
 Species Examination on the merits begins after the
 applicant’s election. If the elected species or group of patentably indistinct
 species is anticipated by or obvious over the prior art, an appropriate art-based
 rejection of any claim that reads on the elected species or group of patentably
 indistinct species should be made. Non-prior art rejections that apply to the
 elected species or group of patentably indistinct species should also be made. If
 the election was made with traverse, it should be treated in accordance with
 MPEP §
 821.01 . 
 

 If the Markush grouping was improper, a rejection on
 the basis of there being an improper Markush grouping should be made as described
 in MPEP § 2117 . The examiner should use form paragraph
 8.40 to
 make the improper Markush grouping rejection and to advise the applicant of the
 species that do not belong to a proper Markush grouping that includes the elected
 species. The form paragraph also serves to advise the applicant that a rejection
 on the basis of there being an improper Markush grouping is an appealable rather
 than a petitionable matter. 
 

 Example 1. A claim is drawn to a proper Markush grouping of
 species A, B, or C. The three species are patentably distinct, and the examiner
 requires a provisional election. Species A is elected. The examiner rejects
 species A over prior art, and indicates that species B and C have not been
 searched and examined. Use form paragraph 8.01 or
 8.02 
 as appropriate to set forth the election requirement.
 

 

 Example 2. A claim is drawn to a Markush grouping of
 species A, B, C, D, or E. The five species are patentably distinct, and the
 examiner requires a provisional election. The grouping of species A, B, or C is
 a proper Markush grouping. However, the grouping of species A, B, C, D, or E is
 not a proper Markush grouping. Species A is elected. The examiner rejects
 species A over prior art, and indicates that species B, C, D, and E have not
 been searched and examined. Use form paragraph 8.01 or
 8.02 
 as appropriate to set forth the election requirement. The examiner should also
 reject the claim on the basis of there being an improper Markush grouping using
 form paragraph 8.40 . The improper Markush grouping rejection
 should indicate that species D and E do not belong to the proper Markush
 grouping of species A, B, or C. 
 

 
 2. Elected Species in Proper Markush
 Grouping Allowable over the Prior Art If the elected species or group of patentably
 indistinct species is not anticipated by or obvious over the prior art, the
 examiner should extend the search and examination to a non-elected species or
 group of species that falls within the scope of a proper Markush grouping that
 includes the elected species. The search and examination should be continued until
 either (1) prior art is found that anticipates or renders obvious a species that
 falls within the scope of a proper Markush grouping that includes the elected
 species, or (2) it is determined that no prior art rejection of any species that
 falls within the scope of a proper Markush grouping that includes the elected
 species can be made. The examiner need not extend the search beyond a proper
 Markush grouping. In other words, the examiner need not extend the search to any
 additional species that do not share a single structural similarity and a common
 use with the elected species (i.e., do not belong to the same recognized physical
 or chemical class or to the same art-recognized class and/or do not have a common
 use and/or do not share a substantial structural feature of a chemical compound
 and a use that flows from the substantial structural feature). The examiner should
 continue examination of the Markush claim to determine whether it meets all other
 requirements of patentability (e.g., 35 U.S.C. 101 and
 112 , nonstatutory double patenting, and proper Markush
 grouping). 
 

 In the interest of compact prosecution, the examiner
 should ensure that the record is clear as to which species have been searched and
 have been found allowable over the prior art. The examiner should indicate that
 the provisional election of species requirement has been modified if additional
 species beyond the elected species have been searched and determined to be
 allowable over the prior art. The examiner should indicate that the provisional
 election of species requirement has been withdrawn if the full scope of the
 Markush grouping has been searched and been determined to be allowable over the
 prior art. Note that the examiner can only make or maintain any restriction
 requirement if there would be serious search and/or examination burden. Clarity of
 the record with regard to the provisional election of species requirement is
 critical to proper application of 35 U.S.C. 121 in later
 divisional applications. 
 

 If a Markush grouping as set forth in a claim is
 proper and election of species has been required, the examiner must continue to
 search the species of the claim unless the claim has been found to be unpatentable
 over prior art. An examiner may not (such as by way of an Ex parte Quayle action
 or a Notice of Non-Responsive Amendment) seek to require an applicant to limit the
 scope of a claim that is directed to a proper Markush group to a subset of species
 that falls within the scope of the claim in the absence of a rejection of the
 claim for not complying with the requirements for patentability (e.g.,
 35 U.S.C.
 101 , 102 , 103 , and
 112 , and nonstatutory double patenting). 
 

 D. Final Rejection; Finality
 of Election Requirement An Office action may be made final if the
 requirements of MPEP
 §§ 706.07 - 706.07(b) are met. If a claim in
 a first application recites a proper Markush grouping that encompasses patentably
 distinct inventions, an examiner who has required a provisional election of
 species need not continue to search the claim if the claim is rejected over prior
 art in a proper final rejection. That is, in this circumstance, the applicant’s
 election loses its provisional status and is given full effect under
 35 U.S.C.
 121 . Furthermore, if an applicant files a second application
 that is a divisional application claiming benefit under 35 U.S.C.
 120 of the first application, the 35 U.S.C.
 121 shield may be applicable. So long as the consonance
 requirement is met, a claim in the divisional application to a previously
 non-elected and unexamined embodiment may not be rejected on the ground of
 non-statutory double patenting over an embodiment examined in the first
 application. An amendment canceling the rejected species received after final
 under 37 CFR
 1.116 may typically be denied entry on the basis that it
 would require further consideration and/or search. If the applicant’s provisional
 election was made with traverse and the requirement has been made final, the
 applicant may file a petition for review under 37 CFR 1.144 . See
 MPEP §§ 818.01(c) and 818.01(d) . 
 

 Note that no Markush claim can be allowed until any
 improper Markush grouping rejection has been overcome or withdrawn (see
 MPEP § 2117 , subsection III), and all other conditions
 of patentability have been satisfied. 
 

 

 
 803.03 Transitional Applications [R-08.2012]
 PRACTICE RE TRANSITIONAL APPLICATION 
 37 CFR 1.129 Transitional procedures for limited examination after final rejection and
 restriction practice. 

 *****

 
 (b)
 
 (1) In an application, other than for reissue or a design
 patent, that has been pending for at least three years as of June 8,
 1995; taking into account any reference made in the application to any
 earlier filed application under 35 U.S.C. 120 ,
 121 and 365(c) , no
 requirement for restriction or for the filing of divisional
 applications shall be made or maintained in the application after June
 8, 1995, except where:
 
 (i) The requirement was first made in the
 application or any earlier filed application under
 35 U.S.C.
 120 , 121 , and
 365(c) prior
 to April 8, 1995;
 

 (ii) The examiner has not made a requirement for
 restriction in the present or parent application prior to April
 8, 1995, due to actions by the applicant; or
 

 (iii) The required fee for examination of each
 additional invention was not paid.
 

 
 

 (2) If the application contains more than one independent
 and distinct invention and a requirement for restriction or for the
 filing of divisional applications cannot be made or maintained
 pursuant to this paragraph, applicant will be so notified and given a
 time period to:
 
 (i) Elect the invention or inventions to be searched
 and examined, if no election has been made prior to the notice,
 and pay the fee set forth in 1.17(s) for each independent and
 distinct invention claimed in the application in excess of one
 which applicant elects;
 

 (ii) Confirm an election made prior to the notice and
 pay the fee set forth in § 1.17(s) for each independent and
 distinct invention claimed in the application in addition to the
 one invention which applicant previously elected; or
 

 (iii) File a petition under this section traversing
 the requirement. If the required petition is filed in a timely
 manner, the original time period for electing and paying the fee
 set forth in § 1.17(s) 
 will be deferred and any decision on the petition affirming or
 modifying the requirement will set a new time period to elect
 the invention or inventions to be searched and examined and to
 pay the fee set forth in § 1.17(s) for each independent and
 distinct invention claimed in the application in excess of one
 which applicant elects.
 

 
 

 (3) The additional inventions for which the required fee
 has not been paid will be withdrawn from consideration under
 § 1.142(b) . An applicant who desires
 examination of an invention so withdrawn from consideration can file a
 divisional application under 35 U.S.C. 121 .
 

 
 

 (c) The provisions of this section shall not be applicable to
 any application filed after June 8, 1995.
 

 
 

 “Restriction” under 37 CFR 1.129(b) applies to both
 restriction requirements under 37 CFR 1.142 and election of
 species requirements under 37 CFR 1.146 .
 

 37 CFR
 1.129(b)(1) provides for examination of more than one
 independent and distinct invention in certain applications pending for 3 years or
 longer as of June 8, 1995, taking into account any reference to any earlier
 application under 35 U.S.C. 120 , 121 , or
 365(c) . Applicant will not be permitted to have such
 additional invention(s) examined in an application if:
 

 
 (A) the requirement was made in the application or in an earlier
 application relied on under 35 U.S.C. 120 ,
 121 , or 365(c) prior to April 8,
 1995; 
 

 (B) no restriction requirement was made with respect to the
 invention(s) in the application or earlier application prior to April 8, 1995,
 due to actions by the applicant; or 
 

 (C) the required fee for examination of each additional invention
 was not paid. 
 

 
 Only if one of these exceptions applies is a normal restriction
 requirement appropriate and telephone restriction practice may be used.
 

 Examples of what constitute “actions by the applicant” in
 37 CFR
 1.129(b)(1) are: 
 

 
 (A) applicant abandoned the application and continued to refile the
 application such that no Office action could be issued in the application, 
 

 (B) applicant requested suspension of prosecution under
 37 CFR
 1.103(a) such that no Office action could be issued in
 the application,
 

 (C) applicant disclosed a plurality of independent and distinct
 inventions in the present or parent application, but delayed presenting claims
 to more than one of the disclosed independent and distinct inventions in the
 present or parent application such that no restriction requirement could be
 made prior to April 8, 1995, and
 

 (D) applicant combined several applications, each of which claimed
 a different independent and distinct invention, into one large “continuing”
 application, but delayed filing the continuing application first claiming more
 than one independent and distinct invention such that no restriction
 requirement could be made prior to April 8, 1995.
 

 
 In examples (A) and (B), the fact that the present or parent
 application claiming independent and distinct inventions was on an examiner’s docket
 for at least 3 months prior to abandonment or suspension, or in examples (C) and (D),
 the fact that the amendment claiming independent and distinct inventions was first
 filed, or the continuing application first claiming the additional independent and
 distinct inventions was on an examiner’s docket, at least 3 months prior to April 8,
 1995, is prima facie evidence that applicant’s actions did not
 prevent the Office from making a requirement for restriction with respect to those
 independent and distinct inventions prior to April 8, 1995. Furthermore, an extension
 of time under 37
 CFR 1.136(a) does not constitute such “actions by the
 applicant” under 37
 CFR 1.129(b)(1) .
 

 NOTE : If an examiner believes an application falls under the exception
 that no restriction could be made prior to April 8, 1995, due to applicant’s action,
 the application must be brought to the attention of the Technology Center (TC)
 Special Program Examiner for review.
 

 Under 37 CFR 1.129(b)(2) , if the
 application contains claims to more than one independent and distinct invention, and
 no requirement for restriction or for the filing of divisional applications can be
 made or maintained, applicant will be notified and given a time period to:
 

 
 (A) elect the invention or inventions to be searched and examined,
 if no election has been made prior to the notice, and pay the fee set forth in
 37 CFR 1.17(s) for each
 independent and distinct invention claimed in the application in excess of one
 which applicant elects,
 

 (B) in situations where an election was made in reply to a
 requirement for restriction that cannot be maintained, confirm the election
 made prior to the notice and pay the fee set forth in 37 CFR
 1.17(s) for each independent and distinct invention
 claimed in the application in addition to the one invention which applicant
 previously elected, or
 

 (C) file a petition under 37 CFR 1.129(b)(2) 
 traversing the requirement without regard to whether the requirement has been
 made final. No petition fee is required. 
 

 
 37 CFR
 1.129(b)(2) also provides that if the petition is filed in a
 timely manner, the original time period for electing and paying the fee set forth in
 37 CFR 1.17(s) will be deferred and any decision on the
 petition affirming or modifying the requirement will set a new time period to elect
 the invention or inventions to be searched and examined and to pay the fee set forth
 in 37
 CFR 1.17(s) for each independent and distinct invention claimed
 in the application in excess of one which applicant elects.
 

 Under 37 CFR 1.129(b)(3) , each
 additional invention for which the required fee set forth in 37 CFR
 1.17(s) has not been paid will be withdrawn from consideration
 under 37 CFR
 1.142(b) . An applicant who desires examination of an invention
 so withdrawn from consideration can file a divisional application under
 35 U.S.C.
 121 .
 

 37 CFR
 1.129(c) clarifies that the provisions of 37 CFR 1.129(a) and
 (b) are not applicable to any application filed after June 8,
 1995. However, any application filed on June 8, 1995, would be subject to a 20-year
 patent term.
 

 Form paragraph 8.41 may be used to notify applicant
 that the application is a transitional application and is entitled to consideration
 of additional inventions upon payment of the required fee.
 

 ¶ 8.41 Transitional Restriction or Election of Species Requirement –
 pre-GATT Filing
 

 This application is subject to the
 transitional restriction provisions of Public Law 103-465, which became effective on June 8,
 1995, because:
 

 
 1. the application was filed on
 or before June 8, 1995, and has an effective U.S. filing date of June 8, 1992, or
 earlier;
 

 2. a requirement for restriction
 was not made in the present or a parent application prior to April 8, 1995;
 and
 

 3. the examiner was not
 prevented from making a requirement for restriction in the present or a parent
 application prior to April 8, 1995, due to actions by the applicant.
 

 
 The transitional restriction
 provisions permit applicant to have more than one independent and distinct invention examined
 in the same application by paying a fee for each invention in excess of one.
 

 Final rules concerning the transition
 restriction provisions were published in the Federal Register at 60 FR
 20195 (April 25, 1995) and in the Official Gazette at 1174 OG 15 (May 2,
 1995). The final rules at 37
 CFR 1.17(s) include the fee amount required to be paid for each
 additional invention as set forth in the following requirement for restriction. See the
 current fee schedule for the proper amount of the fee.
 

 Applicant must either: (1) elect the
 invention or inventions to be searched and examined and pay the fee set forth in
 37 CFR
 1.17(s) for each independent and distinct invention in excess of one
 which applicant elects; or (2) file a petition under 37 CFR 1.129(b) traversing the
 requirement.
 

 Examiner Note:
 
 1. This form paragraph should be
 used in all restriction or election of species requirements made in applications subject
 to the transition restriction provisions set forth in 37 CFR 1.129(b) .
 The procedure is NOT applicable to any design or reissue application.
 
 
 
 

 
 803.03(a) Transitional Application — Linking Claim Allowable [R-08.2012]

 Whenever divided inventions in a transitional application are
 rejoined because a linking claim is allowable ( MPEP § 809 ,
 §
 821.04 , and § 821.04(a) ) and applicant paid the
 fee set forth in 37 CFR 1.17(s) for the additional
 invention, applicant should be notified that he or she may request a refund of the
 fee paid for that additional invention.
 

 

 
 803.03(b) Transitional Application — Generic Claim
 Allowable [R-08.2012]
 

 Whenever claims drawn to an additional species in a transitional
 application for which applicant paid the fee set forth in 37 CFR
 1.17(s) are no longer withdrawn from consideration because they
 are fully embraced by an allowable generic claim, applicant should be notified that
 he or she may request a refund of the fee paid for that additional species.
 

 The determination of when claims to a nonelected species would no
 longer be withdrawn from consideration should be made as indicated in
 MPEP §
 806.04(d) , § 821.04 , and § 821.04(a) .
 

 

 

 

 

 

 

 
 803.04 Nucleotide Sequences [R-07.2015]

 Polynucleotide molecules defined by their nucleic acid sequence
 (hereinafter “nucleotide sequences”) that encode different proteins are structurally
 distinct chemical compounds. These sequences are thus deemed to normally constitute
 independent and distinct inventions within the meaning of 35 U.S.C. 121 .
 Absent evidence to the contrary, each such nucleotide sequence is presumed to represent
 an independent and distinct invention, subject to a restriction requirement pursuant to
 35 U.S.C.
 121 and 37 CFR 1.141 et seq .
 

 In 1996, the Commissioner of Patents and Trademarks
 decided sua sponte to partially waive the requirements of
 37 CFR
 1.141 et seq. and permit a reasonable number of such nucleotide sequences
 to be claimed in a single application. See Examination of Patent Applications
 Containing Nucleotide Sequences, 1192 OG 68 (November 19, 1996). 
 

 In 2007, the Commissioner for Patents rescinded the
 waiver. See Examination of Patent Applications Containing Nucleotide
 Sequences, 1316 OG 123 (March 27, 2007). All pending applications are
 subject to the 2007 OG notice. Note, however, that supplemental restriction requirements
 will not be advanced in applications that have already received an action on their
 merits for multiple nucleotide sequences in the absence of extenuating circumstances.
 For national applications filed under 35 U.S.C. 111(a) , polynucleotide
 inventions will be considered for restriction, rejoinder, and examination practice in
 accordance with the standards set forth in MPEP Chapter 800 . Claims to
 polynucleotide molecules will be considered for independence, relatedness, distinction
 and burden in the same manner as claims to any other type of molecule.
 

 See MPEP
 § 1850 for treatment of claims containing independent and
 distinct nucleotide sequences in international applications filed under the Patent
 Cooperation Treaty (PCT) and national stage applications filed under 35 U.S.C. 371 .
 
 

 

 
 803.05 Reissue Application Practice [R-07.2022]

 
 37 CFR 1.176 Examination of reissue. 

 *****

 
 (b) Restriction between subject matter of the
 original patent claims and previously unclaimed subject matter may be required
 (restriction involving only subject matter of the original patent claims will
 not be required). If restriction is required, the subject matter of the
 original patent claims will be held to be constructively elected unless a
 disclaimer of all the patent claims is filed in the reissue application, which
 disclaimer cannot be withdrawn by applicant.
 

 
 

 Restriction practice relating to reissue applications is
 governed by 37 CFR
 1.176(b) which specifies that restriction may only be required
 between the invention(s) of the original patent claims and previously unclaimed
 invention(s) set forth in new claims added in the reissue application. The claims of the
 original patent must not be restricted as being directed to two or more independent and
 distinct inventions and must be examined together. Where restriction is required by the
 examiner, the invention(s) set forth by the original patent claims and any newly added
 claims that are directed to the same invention(s) will be held as constructively
 elected. Any new claim that is directed to an invention that is independent and distinct
 from the invention(s) of the original patent claims will be withdrawn from
 consideration. See MPEP §
 1450 for a detailed explanation of this practice. Note that
 applicant may initiate a division of the claims by filing more than one reissue
 application in accordance with 37 CFR 1.177 . See
 MPEP §
 1451 for a detailed explanation of this practice.
 

 Where a restriction (including an election of species)
 requirement was made in an application and applicant permitted the elected invention to
 issue as a patent without filing a divisional application on the non-elected
 invention(s) or on non-claimed subject matter distinct from the elected invention, the
 non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by
 filing a reissue application. Once an applicant acquiesces to a restriction (including
 an election of species) requirement, any invention distinct from that elected and
 prosecuted to allowance—whether originally claimed or not—can only be pursued in a
 timely-filed divisional application. A reissue applicant’s failure to timely file a
 divisional application is not considered to be error causing a patent granted on the
 elected claims to be partially inoperative by reason of claiming less than the applicant
 had a right to claim. Accordingly, this is not correctable by reissue of the original
 patent under 35
 U.S.C. 251 . In re Watkinson, 900 F.2d 230, 14
 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ
 673 (Fed. Cir. 1986). See MPEP § 1412.01 .
 

 

 [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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 03/09/2026 20:50:53