Basis for Restriction Practice in Statute and Rules

The basis for restriction practice is found in the following statute and

rules:

35 U.S.C. 121

Divisional applications.

[

Editor Note:

Applicable to any patent application filed on or after September 16, 2012. See

pre-AIA 35

U.S.C. 121

for the law otherwise applicable.

]

If two or more independent and distinct inventions are

claimed in one application, the Director may require the application to be restricted to

one of the inventions. If the other invention is made the subject of a divisional

application which complies with the requirements of

section 120

it

shall be entitled to the benefit of the filing date of the original application. A

patent issuing on an application with respect to which a requirement for restriction

under this section has been made, or on an application filed as a result of such a

requirement, shall not be used as a reference either in the Patent and Trademark Office

or in the courts against a divisional application or against the original application or

any patent issued on either of them, if the divisional application is filed before the

issuance of the patent on the other application. The validity of a patent shall not be

questioned for failure of the Director to require the application to be restricted to

one invention.

pre-AIA 35 U.S.C. 121

Divisional applications.

[

Editor Note:

Not applicable

to any

patent application filed on or after September 16, 2012. See

35 U.S.C.

121

for the law otherwise applicable.

]

If two or more independent and distinct inventions are claimed in one

application, the Director may require the application to be restricted to one of the

inventions. If the other invention is made the subject of a divisional application which

complies with the requirements of

section 120

of this title it shall

be entitled to the benefit of the filing date of the original application

applicable.

]

If two or more independent and distinct inventions are claimed in one

application, the Director may require the application to be restricted to one of the

inventions. If the other invention is made the subject of a divisional application which

complies with the requirements of

section 120

of this title it shall

be entitled to the benefit of the filing date of the original application. A patent

issuing on an application with respect to which a requirement for restriction under this

section has been made, or on an application filed as a result of such a requirement,

shall not be used as a reference either in the Patent and Trademark Office or in the

courts against a divisional application or against the original application or any

patent issued on either of them, if the divisional application is filed before the

issuance of the patent on the other application. If a divisional application is directed

solely to subject matter described and claimed in the original application as filed, the

Director may dispense with signing and execution by the inventor. The validity of a

patent shall not be questioned for failure of the Director to require the application to

be restricted to one invention.

37 CFR 1.141  Different inventions in one national application.

(a) Two or more independent and distinct inventions may not be claimed

in one national application, except that more than one species of an invention, not to

exceed a reasonable number, may be specifically claimed in different claims in one

national application, provided the application also includes an allowable claim generic

to all the claimed species and all the claims to species in excess of one are written in

dependent form (

§

1.75

) or otherwise include all the limitations of the generic

claim.

that more than one species of an invention, not to

exceed a reasonable number, may be specifically claimed in different claims in one

national application, provided the application also includes an allowable claim generic

to all the claimed species and all the claims to species in excess of one are written in

dependent form (

§

1.75

) or otherwise include all the limitations of the generic

claim.

(b) Where claims to all three categories, product, process of making,

and process of use, are included in a national application, a three way requirement for

restriction can only be made where the process of making is distinct from the product.

If the process of making and the product are not distinct, the process of using may be

joined with the claims directed to the product and the process of making the product

even though a showing of distinctness between the product and process of using the

product can be made.

37 CFR 1.142  Requirement for restriction.

(a) If two or more independent and distinct inventions are claimed in

a single application, the examiner in an Office action will require the applicant

in the reply to that action to elect an invention to which the claims will be

restricted, this official action being called a requirement for restriction (also

known as a requirement for division). Such requirement will normally be made

before any action on the merits; however, it may be made at any time before final

action.

application, the examiner in an Office action will require the applicant

in the reply to that action to elect an invention to which the claims will be

restricted, this official action being called a requirement for restriction (also

known as a requirement for division). Such requirement will normally be made

before any action on the merits; however, it may be made at any time before final

action.

(b) Claims to the invention or inventions not elected, if not

canceled, are nevertheless withdrawn from further consideration by the examiner by

the election, subject however to reinstatement in the event the requirement for

restriction is withdrawn or overruled.

The pertinent Patent Cooperation Treaty (PCT) Articles and Rules are cited

and discussed in

MPEP

Chapter 1800

.

Sections 1850

,

1875

, and

1893.03(d)

should be consulted for discussions on unity of

invention:

(A) before the International Searching Authority;

(B) before the International Preliminary Examining Authority; and

(C) in the National Stage under

35 U.S.C. 371

.