M.P.E.P. 800 Restriction in Applications File Under 35 USC 111; Double Patenting Flashcards
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?
- Election
- 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
Either:
1. independent
2. Distinct
Independent
Separate in design, operation, or effect.
Distinct
Capable of separate manufacture, use or sale.
Genus
generic claim
Species
specific version of the genus.
Sub-Combination
Smaller part of a larger combination.
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.
Product, Apparatus and Product Distinction Problem
You have to make an election.
Even if you don’t agree.
With Traverse
You preserve your right to petition the propriety of the restriction requirement.
Must be abuse of discretion.
Double Patenting
Two types:
1. Statutory - Same Invention
2. Obviousness
Obviousness Double Patenting
Can’t patent an obvious variation.
Only if you turn in Terminal Disclaimer
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.