Meaning of “Independent” and “Distinct”

35 U.S.C.

121

quoted in the preceding section states that the Director may

require restriction if two or more “independent and distinct” inventions are claimed in

one application. In

37

CFR 1.141

, the statement is made that two or more “independent and

distinct inventions” may not be claimed in one application.

This raises the question of the inventions as between which the Director

may require restriction. This, in turn, depends on the construction of the expression

“independent and distinct” inventions.

“Independent”, of course, means not dependent, or unrelated. If

“distinct” means the same thing, then its use in the statute and in the rule is

redundant. If “distinct” means something different, then the question arises as to what

the difference in meaning between these two words may be. The hearings before the

committees of Congress considering the codification of the patent laws indicate that

35 U.S.C.

121

: “enacts as law existing practice with respect to division, at

the same time introducing a number of changes.”

The report on the hearings does not mention as a change that is

introduced, the inventions between which the Director may properly require division.

The term “independent” as already pointed out, means not dependent, or

unrelated. A large number of inventions between which, prior to the 1952 Act, division

had been proper, are dependent inventions, such as, for example, combination and a

subcombination thereof; as process and apparatus used in the practice of the process; as

composition and the process in which the composition is used; as process and the product

made by such process, etc. If section 121 of the 1952 Act were intended to direct the

Director never to approve division between dependent inventions, the word “independent”

would clearly have been used alone. If the Director has authority or discretion to

restrict independent inventions only, then restriction would be improper as between

dependent inventions, e.g., the examples used for purpose of illustration above

, etc. If section 121 of the 1952 Act were intended to direct the

Director never to approve division between dependent inventions, the word “independent”

would clearly have been used alone. If the Director has authority or discretion to

restrict independent inventions only, then restriction would be improper as between

dependent inventions, e.g., the examples used for purpose of illustration above. Such

was clearly not the intent of Congress. Nothing in the language of the statute and

nothing in the hearings of the committees indicate any intent to change the substantive

law on this subject. On the contrary, joinder of the term “distinct” with the term

“independent”, indicates lack of such intent. The law has long been established that

dependent inventions (frequently termed related inventions) such as used for

illustration above may be properly divided if they are, in fact, “distinct” inventions,

even though dependent.

I.

INDEPENDENT

The term “independent” (i.e., unrelated) means that there is no

disclosed relationship between the two or more inventions claimed, that is, they are

unconnected in design, operation, and effect. For example, a process and an apparatus

incapable of being used in practicing the process are independent inventions. See

also

MPEP §

806.06

and

§ 808.01

.

II.

RELATED BUT DISTINCT

Two or more inventions are related (i.e., not independent) if they

are disclosed as connected in at least one of design (e.g., structure or method of

manufacture), operation (e.g., function or method of use), or effect. Examples of

related inventions include combination and part (subcombination) thereof, process and

apparatus for its practice, process and product made, etc. In this definition the

term related is used as an alternative for dependent in referring to inventions other

than independent inventions

design (e.g., structure or method of

manufacture), operation (e.g., function or method of use), or effect. Examples of

related inventions include combination and part (subcombination) thereof, process and

apparatus for its practice, process and product made, etc. In this definition the

term related is used as an alternative for dependent in referring to inventions other

than independent inventions.

Related inventions are distinct if the inventions

as

claimed

are not connected in at least one of design, operation, or

effect (e.g., can be made by, or used in, a materially different process) and wherein

at least one invention is PATENTABLE (novel and nonobvious) OVER THE OTHER (though

they may each be unpatentable over the prior art). See

MPEP § 806.05(c)

(combination and subcombination) and

§ 806.05(j)

(related products or

related processes) for examples of when a two-way test is required for

distinctness.

It is further noted that the terms “independent” and “distinct” are

used in decisions with varying meanings. All decisions should be read carefully to

determine the meaning intended.