MPEP § 812 — MPEP § 812
Current through: 2022-07-01

812-Who Should Make the Requirement 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0800 

 Section 812 
 

 
 
 
 
 
 812 Who Should Make the Requirement [R-07.2022]

 The examiner to which the application has been assigned will make the
 restriction requirement, unless the classification is not reasonably correct and complete.
 In this instance the examiner assigned the application will submit a C-Star (C*)
 classification challenge on the unrestricted application to have the C* classification
 picture corrected. If the C* challenge is proper, the application may be reassigned to
 another examiner whose portfolio matches the new classification picture. The newly assigned
 examiner would then make the restriction requirement, if appropriate.
 

 
 812.01 Telephone Restriction Practice [R-07.2022]

 If an examiner determines that a requirement for restriction should be
 made in an application, the examiner should formulate a draft of such restriction
 requirement including an indication of those claims considered to be linking and/or
 generic. Thereupon, the examiner should telephone the attorney or agent of record and
 request an oral election, with or without traverse. The examiner should arrange for a
 second telephone call within a reasonable time, generally within 3 working days, to
 provide time for the attorney or agent to consider the requirement. If the attorney or
 agent objects to making an oral election, or fails to respond, a restriction requirement
 will be mailed, and should contain reference to the unsuccessful telephone call. When an
 oral election is made, the examiner will then proceed to incorporate into the next
 Office action a formal restriction requirement including the date of the election, the
 attorney’s or agent’s name, and a complete record of the telephone interview, followed
 by a complete action on the elected invention as claimed, including linking and/or
 generic claims if present. However, no telephone communication need be made where the
 requirement for restriction is complex, the application is being prosecuted by the
 applicant pro se, or the examiner knows from past experience that an election will not
 be made by telephone.
 

 Form paragraphs 8.23 or 8.23.01 should be
 used to make a telephone election of record.
 

 ¶ 8.23 Requirement, When Elected by Telephone

 During a telephone conversation with [1] on [2] a provisional election was made [3] traverse to prosecute the invention of [4] , claim [5] . Affirmation of this election must be made by applicant in replying to this Office action. Claim [6] withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being drawn to a non-elected invention.
 

 Examiner Note:
 
 1. In bracket 3, insert --with-- or --without--, whichever is applicable.

 2. In bracket 4, insert either the elected group or species.

 3. An action on the merits of the claims to the elected invention should follow.
 
 

 ¶ 8.23.01 Requirement, No Election by Telephone

 A telephone call was made to [1] on [2] to request an oral election to the above restriction requirement, but did not result in an election being made.
 

 Examiner Note:
 
 1. In bracket 1, insert the name of the applicant or attorney or agent contacted.

 2. In bracket 2, insert the date(s) of the telephone contact(s).

 3. This form paragraph should be used in all instances where a telephone election was attempted and the applicant’s representative
 did not or would not make an election.
 

 4. This form paragraph should not be used if no contact was made with applicant or applicant’s representative.
 
 
 

 Registered attorneys or agents not of record in a patent
 application should not be contacted for restriction requirements. See
 MPEP §
 408 . If an Application Data Sheet lists one or more attorneys
 or agents under representative information, but a valid power of attorney has not been
 filed in the application, telephone restriction practice is not permitted, and form
 paragraph 8.23.03 should be used. 
 

 ¶ 08.23.03 No Telephone Restriction Permitted, No Attorney or Agent of Record, Practitioner Included in ADS

 Telephone restriction practice is not permitted because it appears
 applicant has legal representation but a valid power of attorney has not been filed in the
 present application. Providing representative information in an Application Data Sheet (ADS)
 does not constitute a power of attorney. See 37 CFR 1.76(b)(4) and
 MPEP §
 408 . For information on appointing a power of attorney, see
 MPEP §
 402.02 et seq .
 

 Examiner Note:
 
 This form paragraph should be used ONLY when a
 practitioner or customer number is identified in the ADS but no power of attorney is
 of record.
 
 
 

 If, on examination, the examiner finds the claims to an invention
 elected without traverse to be allowable and no nonelected invention is eligible for
 rejoinder (see MPEP §
 821.04 ), the restriction requirement should be attached to the
 Notice of Allowability form PTOL-37 and should include cancelation of the nonelected
 claims, and a statement that the prosecution is closed and that a notice of allowance
 will be sent in due course. Correction of formal matters in the above-noted situation
 which cannot be handled by a telephone call and thus requires action by the applicant
 should be handled under the Ex parte Quayle practice, using Office
 Action Summary form PTOL-326.
 

 Should the elected invention as claimed be found allowable in the first
 action, and an oral traverse was noted, the examiner should include in the action a
 statement under MPEP §
 821.01 , making the restriction requirement final and giving
 applicant two months to either cancel the claims drawn to the nonelected invention or
 take other appropriate action. ( 37 CFR 1.144 ). Failure to take
 action will be treated as an authorization to cancel the nonelected claims by an
 examiner’s amendment and pass the application to issue. Prosecution of the application
 is otherwise closed.
 

 In either situation (traverse or no traverse), caution should be
 exercised to determine if any of the allowable claims are linking and/or generic claims,
 or if any nonelected inventions are eligible for rejoinder (see MPEP § 821.04 ),
 before canceling claims drawn to the nonelected invention.
 

 When a telephonic election results in the withdrawal of claims such
 that the assigned examiner believes that the C* classification picture is incorrect, the
 examiner should enter a C* classification challenge. In this instance, the examiner must
 document the complete restriction requirement using the internal “Telephonic Restriction
 and Election Summary” form indicating: the groups and species of invention(s) and, if
 necessary, the classification thereof; the claims corresponding to each group; the
 elected invention and/or species; the date of the election; the applicant or applicant
 representative making the election; and whether the election was with or without
 traverse. This form is not mailed and is used only to document the restriction
 requirement until such time as an action on the merits of the elected claims is mailed.
 After completion of the form the assigned examiner will submit a C* classification
 picture challenge indicating that the challenge was the result of an election.
 

 If the C* classification challenge results in the
 application remaining with the examiner, the examiner will incorporate the written
 restriction and election into the next Office action. If the C* classification challenge
 results in the application being reassigned, the newly assigned examiner will document
 the substance of the internal “Telephonic Restriction and Election Summary” form in the
 next Office action as indicated above. If the newly assigned examiner disagrees with the
 original restriction requirement, differences should be settled by the existing chain of
 command, e.g., supervisory patent examiner or TC Director.
 

 Telephone restriction practice is limited to use by examiners who have
 at least negotiation authority. Other examiners must have the prior approval of their
 supervisory patent examiner or their reviewing primary examiner. See
 MPEP §
 707.01 .
 

 

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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