Transitional Applications

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

rior 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

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

iction 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

rmore, 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

d 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.