MPEP 800
Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting

This is the Ninth Edition of the MPEP, Revision 07.2022, Last Revised in February 2023

Chapter 800: Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting

801: Introduction

802: Basis for Restriction Practice in Statute and Rules

802.01: Meaning of "Independent" and "Distinct"

802.02: Definition of Restriction

803: Restriction — When Proper

803.01: Review by Examiner with at Least Partial Signatory Authority

803.02: Election of Species Requirements – Markush Claims

803.03: Transitional Applications

803.03(a): Transitional Application — Linking Claim Allowable

803.03(b): Transitional Application — Generic Claim Allowable

803.04: Nucleotide Sequences

803.05: Reissue Application Practice

804: Definition of Double Patenting

804.01: Prohibition of Nonstatutory Double Patenting Rejections Under 35 U.S.C. 121

804.02: Avoiding a Double Patenting Rejection

804.03: Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement

804.04: Submission to Technology Center Director

804.05: Impact of Patent Term Extension under 35 U.S.C. 156 on Nonstatutory Double Patenting

805: Effect of Improper Joinder in Patent

806: Determination of Distinctness or Independence of Claimed Inventions

806.01: Compare Claimed Subject Matter

806.02: Reserved

806.03: Single Embodiment, Claims Defining Same Essential Features

806.04: Genus and/or Species Inventions

806.04(a): Reserved

806.04(b): Species May Be Independent or Related Inventions

806.04(c): Reserved

806.04(d): Definition of a Generic Claim

806.04(e): Claims Limited to Species

806.04(f): Restriction Between Mutually Exclusive Species

806.04(g): Reserved

806.04(h): Species Must Be Patentably Distinct From Each Other

806.04(i): Generic Claims Presented In a Separate Application After Issuance of Species Claims

806.05: Related Inventions

806.05(a): Combination and Subcombination

806.05(b): Reserved

806.05(c): Criteria of Distinctness Between Combination and Subcombination

806.05(d): Subcombinations Usable Together

806.05(e): Process and Apparatus for Its Practice

806.05(f): Process of Making and Product Made

806.05(g): Apparatus and Product Made

806.05(h): Product and Process of Using

806.05(i): Product, Process of Making, and Process of Using

806.05(j): Related Products; Related Processes

806.06: Independent Inventions

807: Patentability Report Practice Has No Effect on Restriction Practice

808: Reasons for Insisting Upon Restriction

808.01: Reasons for Holding of Independence or Distinctness

808.01(a): Species

808.02: Establishing Burden

809: Linking Claims

809.01: Reserved

809.02: Election of Species Required

809.02(a): Election of Species Required

809.03: Restriction Between Linked Inventions

810: Action on the Merits

811: Time for Making Requirement

811.01: Reserved

811.02: New Requirement After Compliance With Preceding Requirement

811.03: Repeating After Withdrawal Proper

811.04: Proper Even Though Grouped Together in Parent Application

812: Who Should Make the Requirement

812.01: Telephone Restriction Practice

813: Reserved

814: Indicate Exactly How Application Is To Be Restricted

815: Make Requirement Complete

816: Reserved

817: Outline of Letter for Restriction Requirement

818: Election and Reply

818.01: Election in Reply to a Restriction Requirement: Express

818.01(a): Reply Must be Complete

818.01(b): Election is Required, Even When Requirement Is Traversed

818.01(c): Traverse is Required To Preserve Right of Petition

818.01(d): Traverse of Restriction Requirement With Linking Claims

818.02: Election Other Than Express

818.02(a): Election By Originally Presented Claims

818.02(b): Generic Claims Only — No Election of Species; Linking Claims Only – No Election of Invention

818.02(c): Election By Optional Cancelation of Claims

818.02(d): Election By Cancelation of Claims, Lacking Express Election Statement

819: Office Generally Does Not Permit Shift

820: Reserved

821: Treatment of Claims Held To Be Drawn to Nonelected Inventions

821.01: After Election With Traverse

821.02: After Election Without Traverse

821.03: Claims for Different Invention Added After an Office Action

821.04: Rejoinder

821.04(a): Rejoinder Between Product Inventions; Rejoinder Between Process Inventions

821.04(b): Rejoinder of Process Requiring an Allowable Product

822: Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee

823: Unity of Invention Under the Patent Cooperation Treaty