M.P.E.P. 800 Restriction in Applications File Under 35 USC 111; Double Patenting Flashcards Preview

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Flashcards in M.P.E.P. 800 Restriction in Applications File Under 35 USC 111; Double Patenting Deck (23)
1

Basis of Restriction

An applicant is claiming more than one invention.

2

What counts as more than one invention?

Discretionary to Examiner

What easily recognizable as separate inventions

3

What do you do in response to a restriction?

1. Election
2. File a divisional

**Election must be made

4

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

Either:
1. independent
2. Distinct

5

Independent

Separate in design, operation, or effect.

6

Distinct

Capable of separate manufacture, use or sale.

7

Genus

generic claim

8

Species

specific version of the genus.

9

Sub-Combination

Smaller part of a larger combination.

10

How can an examiner show that a restriction is necessary between a combination and a subcombination?

Show:
1. That the combination does not require the particulars of the subcombination AND
2. The subcombination can be shown to have utility by itself.

11

Product, Apparatus and Product Distinction Problem

You have to make an election.

Even if you don't agree.

12

With Traverse

You preserve your right to petition the propriety of the restriction requirement.

Must be abuse of discretion.

13

Double Patenting

Two types:
1. Statutory - Same Invention
2. Obviousness

14

Obviousness Double Patenting

Can't patent an obvious variation.

Only if you turn in Terminal Disclaimer

15

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.

16

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.

17

Provisional Double Patenting

Comparison of claims

One common owner or inventor.

18

Can you respond to a restriction over the phone?

Yes if Examiner initiated the communication

19

How long do you have to respond to a Restriction?

One Month

Can buy five more months $

20

What do you do when you are facing a Same Invention Double Patenting?

Cancel
OR
Amend the claims

21

What do you do when you are facing an Obviousness Double Patenting?

Terminal Disclaimer

22

What is the main requirement of a restriction response?

Elect

23

What do you do if you have a restriction and a linking claim?

Elect and point out that since Claim 2 is a linking claim, it is included in the elected invention.