Restriction and double patenting
This area tests when the Office may split an application, what a reply to a restriction requirement must contain, and how double patenting is avoided or overcome. The one idea to hold onto: restriction creates the 35 U.S.C. 121 shield for divisionals, while terminal disclaimers cure only nonstatutory double patenting.
Examination and prosecution5 min read6 sections
Inventions are independent if they have no disclosed relationship, and related but distinct if, as claimed, they are not connected in design, operation or effect and at least one is patentable over the other (MPEP 802.01). The examiner must also show a serious burden, by separate classification, separate status in the art, a different field of search, or different non-prior-art issues (MPEP 808.02). If both are not shown, all claims must be examined.
| Relationship | Distinct if |
|---|---|
| Combination / subcombination | The combination does not need the subcombination's details, and the subcombination has separate utility (two-way test, MPEP 806.05(c)) |
| Process of making / product | The product can be made by a materially different process, or the process can make a materially different product (MPEP 806.05(f)) |
| Product / process of using | The product has a materially different use, or the process can use a materially different product (MPEP 806.05(h)) |
| Product, making and using | Three-way only if making is distinct from the product; otherwise product-plus-making versus using (37 CFR 1.141(b); MPEP 806.05(i)) |
Election of species applies to patentably distinct species under a generic claim; if the generic claim is allowed, species claims that require all its limitations come back (37 CFR 1.141(a), 1.146; MPEP 806.04(d)).
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