MPEP 800 Flashcards
Restrictions and Double Patenting (13 cards)
Restriction
MPEP 803
1 or more inventions are present in the same applications
Three Types of Restriction
1. Independent
2. Distinct
3. Generic Claims and Multiple Species
Type 1: Inventions are Independent
not dependent on one another
wholly unrelated and inventions are not replated in any way
NOTE: you can file a divisional and get two inventions in specifications to claim an earlier filing date
Type 2: Inventions are Distinct
Capable of separate manufacture and use
not Intertwined
Type 3: Generic Claim and Multiple Species Claims
Extraordinary amount of Species, examiner restricts to a reasonable amount of species (dependent claim)
Note: most appropriate way to approach this would be withdrawing claims. If independent claim is allowable then rest are allowable
Double Patenting
MPEP 804
relates to claims such that the inventions are the same or obvious variations of the other
Can be Avoided by Restriction Requirement.
Election
must elect an invention in response to restriction
elect without traverse
elect with traverse
Note: an alternate response would be to cancel claims directed to one of the two inventions.
You cannot add claims regarding another invention in a continuation application during prosecution
traverse
attempt to get the examiner to change or withdraw a restriction requirement
Double Patenting: Same Invention
Statutory not curable
exact same claim cannot be claimed again
must amend or cancel claim
Double Patenting: Obviousness
Non Statutory
claims towards an obvious variation of claims provided.
can overcome if willing to file a terminal disclaimer
Terminal Disclaimer
claims under obvious double patenting will expire on the same day
Criteria of Double Patenting
Common Inventor/Assignee
Provisional Pre-AIA 102(e)/ Post-AIA 102(a)(2)
Focus on Disclosure
Common Owner/Inventor
Overlapping Disclosures
Must be Secret
Examiners decision on restriction can only be
petitioned NOT appealed
