Flashcards in M.P.E.P. 800 Restriction in Applications File Under 35 USC 111; Double Patenting Deck (23)
Basis of Restriction
An applicant is claiming more than one invention.
What counts as more than one invention?
Discretionary to Examiner
What easily recognizable as separate inventions
What do you do in response to a restriction?
2. File a divisional
**Election must be made
When may an application be properly restricted to one of two or more claimed inventions?
Only if the inventions are each able to support separate patents AND
Separate in design, operation, or effect.
Capable of separate manufacture, use or sale.
specific version of the genus.
Smaller part of a larger combination.
How can an examiner show that a restriction is necessary between a combination and a subcombination?
1. That the combination does not require the particulars of the subcombination AND
2. The subcombination can be shown to have utility by itself.
Product, Apparatus and Product Distinction Problem
You have to make an election.
Even if you don't agree.
You preserve your right to petition the propriety of the restriction requirement.
Must be abuse of discretion.
1. Statutory - Same Invention
Obviousness Double Patenting
Can't patent an obvious variation.
Only if you turn in Terminal Disclaimer
method of responding to the office and saying that these two applications will forever be one and will lapse at the shorter term.
Melding into one.
Provisional Rejections under 102
Made on the basis on an earlier filed application that has not published or issued.
Comparison of disclosure.
Pre-AIA 102 (e)
AIA 102 (a)(2)
Only made if there is a common inventor or owner.
Provisional Double Patenting
Comparison of claims
One common owner or inventor.
Can you respond to a restriction over the phone?
Yes if Examiner initiated the communication
How long do you have to respond to a Restriction?
Can buy five more months $
What do you do when you are facing a Same Invention Double Patenting?
Amend the claims
What do you do when you are facing an Obviousness Double Patenting?
What is the main requirement of a restriction response?