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MPEP > Restriction & Double Patenting (800) > Flashcards

Restriction & Double Patenting (800) Flashcards

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1
Q

What is a restriction requirement?

A

An examiner’s requirement that an applicant choose one invention to prosecute among multiple independent or distinct inventions.

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2
Q

What is the basis for a restriction requirement?

A

The inventions must be independent or distinct and their examination would require a serious burden.

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3
Q

What are the criteria for independence?

A

Inventions are unrelated and do not overlap in design or utility.

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4
Q

What are the criteria for distinct inventions?

A

Inventions are related but have separate and distinct designs or utilities.

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5
Q

What is a serious burden?

A

A situation where separate examination of each invention would require significant effort or different prior art.

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6
Q

Can the applicant traverse a restriction requirement?

A

Yes, by arguing that the inventions are not distinct or that no serious burden exists.

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7
Q

When must an election be made?

A

Before the examiner will consider the merits of the application.

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8
Q

What happens if the applicant does not elect an invention?

A

The application may be abandoned.

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9
Q

Can unelected claims be pursued later?

A

Yes, in a divisional application.

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10
Q

What is rejoinder?

A

The process of reuniting previously restricted claims if they become allowable.

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11
Q

What is an election of species?

A

A requirement to choose among multiple disclosed species within a generic invention.

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12
Q

When is an election of species required?

A

When multiple species are disclosed and the examiner determines a serious burden exists.

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13
Q

What is a species in patent terminology?

A

A specific embodiment or variation of a claimed invention.

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14
Q

Is an election of species binding?

A

Yes, for purposes of initial examination, but the applicant can later pursue other species.

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15
Q

Can unelected species be rejoined?

A

Yes, if they are encompassed by an allowable generic claim.

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16
Q

What must the applicant do when responding to an election requirement?

A

Elect one species and optionally traverse the requirement.

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17
Q

Is the examiner required to examine non-elected species?

A

No, only the elected species is initially examined.

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18
Q

Can an applicant elect with or without traverse?

A

Yes, traverse allows later challenge to the requirement.

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19
Q

What is the effect of electing without traverse?

A

The applicant accepts the restriction requirement.

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20
Q

What must be included in a traversal?

A

A clear statement of disagreement with reasons and supporting arguments.

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21
Q

What is a terminal disclaimer?

A

A statement disclaiming the term of a patent that would extend beyond the term of a related patent.

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22
Q

Why is a terminal disclaimer used?

A

To overcome a non-statutory double patenting rejection.

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23
Q

What is non-statutory double patenting?

A

When claims in two patents are not patentably distinct.

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24
Q

Can a terminal disclaimer be filed for statutory double patenting?

A

No, it only applies to non-statutory double patenting.

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25
Does a terminal disclaimer require common ownership?
Yes, the patents must be commonly owned.
26
What is the effect of a terminal disclaimer?
It limits the term of the second patent to expire with the earlier one.
27
Is a terminal disclaimer effective if ownership later changes?
Only if common ownership is maintained for the duration.
28
Can a terminal disclaimer be withdrawn?
Generally, no once it has been recorded.
29
When must a terminal disclaimer be filed?
Before the patent issues or at the time of response to a rejection.
30
What must a terminal disclaimer include?
A statement that the later patent will expire with the earlier one and is enforceable only while commonly owned.
31
What is statutory double patenting?
A rejection based on claiming the same invention in two patents.
32
How is statutory double patenting addressed?
By canceling or amending the claims; terminal disclaimer is not sufficient.
33
What is consonance in restriction practice?
Maintaining the line of demarcation between inventions as originally set by the examiner.
34
Why is consonance important?
To ensure that divisional applications are protected from double patenting rejections.
35
Can divisional applications receive double patenting rejections?
Yes, if consonance is not maintained.
36
What is a divisional application?
An application filed to pursue restricted claims from a parent application.
37
Can a restriction requirement be made final?
No, restriction requirements are not final actions.
38
Can restriction be imposed in reissue applications?
Yes, if multiple inventions are presented.
39
Is restriction reviewable by the PTAB?
No, restriction requirements are petitionable, not appealable.
40
What happens if applicant files claims covering multiple inventions after allowance?
The examiner may re-institute restriction.
41
Can restriction be made in design patents?
Yes, for multiple distinct designs.
42
What is a linking claim?
A claim that links otherwise independent inventions.
43
How are linking claims treated in restriction?
If allowed, they can cause rejoining of previously restricted claims.
44
Can a restriction be traversed orally?
No, it must be in writing.
45
Can the examiner make an improper restriction?
Yes, but the applicant must timely traverse and petition.
46
What happens if a restriction is not traversed?
It becomes binding and not reviewable later.
47
Can terminal disclaimers be preemptively filed?
Yes, but they are typically filed in response to a rejection.
48
Can restriction requirements be challenged in court?
Rarely, and usually not successful.
49
Can restriction increase prosecution cost?
Yes, by requiring multiple applications.
50
What is rejoinder after appeal?
Reuniting of claims if generic claim is found allowable on appeal.
51
What is a restriction requirement?
A USPTO requirement to select one invention among multiple claimed.
52
What is a species?
A specific embodiment of a claimed invention.
53
What is an election of species?
The applicant's selection of one embodiment for examination.
54
What is a terminal disclaimer?
A legal document limiting the patent term to avoid double patenting.
55
What is non-statutory double patenting?
A situation where claims in separate patents are not patentably distinct.
56
What is statutory double patenting?
When the same invention is claimed in more than one patent.
57
What is consonance?
Consistency in restriction groupings across related applications.
58
What is rejoinder?
Rejoining of restricted claims once a linking or generic claim is allowed.
59
What is a linking claim?
A claim that ties multiple inventions together.
60
What is traversal?
A formal disagreement with a restriction or election requirement.
61
What is an independent invention?
An invention unrelated to others in scope or purpose.
62
What is a distinct invention?
An invention that is related but patentably different.
63
What is a divisional application?
An application filed to pursue restricted claims from an earlier filing.
64
What is the CRU?
Central Reexamination Unit—unrelated to restriction, but often confused.
65
What is a final office action?
A final rejection of claims—not applicable to restriction.
66
What is the difference between restriction and election of species?
Restriction involves separate inventions; election of species involves embodiments.
67
What is common ownership?
The requirement that patents subject to terminal disclaimers be owned by the same entity.
68
What is a petition?
A request for supervisory review of a procedural decision like restriction.
69
What is enforceability tied to in a terminal disclaimer?
Common ownership of the related patents.
70
What happens if terminal disclaimer ownership diverges?
The second patent becomes unenforceable.

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