The Patent Shoppe
  • Home
  • Firm Information
    • Areas of Practice
    • Firm Philosophy
    • Services and Pricing
  • Personnel
    • Patrick J. Lavender
  • Insight
  • Links
  • Contact Us

When is a restriction requirement proper?

2/5/2018

 
Let's look at the law.  35 U.S.C. § 121 states:

"If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions."

Despite what the law clearly says, the Manual of Patent Examining Procedure (Section 803) includes this rule instead:

"A]n application may properly be required to be restricted to one of two or more claimed inventions only if they are able to support separate patents and they are either independent or distinct."

and:

"There would be a serious burden on the examiner if restriction is not required."

Essentially, the law states the inventions must be independent and distinct, but the MPEP allows for restriction if the inventions are independent or distinct.   The administrative rule employed by the U.S.P.T.O. can therefore be challenged as being outside the scope of the statute, but as of to date, it has not been.

Comments are closed.

    Insight
    ( Official Blog )

    RSS Feed

© COPYRIGHT 2015, THE PATENT SHOPPE. ALL RIGHTS RESERVED. THIS WEBSITE IS PUBLISHED BY THE LAW FIRM THE PATENT SHOPPE. ITS CONTENTS ARE NOT INTENDED TO SERVE AS LEGAL ADVICE OR LEGAL OPINION. SUCH ADVICE MAY ONLY BE PROVIDED WHEN RELATED TO SPECIFIC FACT SITUATIONS THAT THE PATENT SHOPPE HAS BEEN RETAINED AS COUNSEL TO ADDRESS.