37 CFR 1.142 - Requirement for restriction
| Cite as | 37 CFR 1.142 |
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427 practice notes
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Patent cases: Patent business goals; implementation,
...application, current practice is to require restriction and an express election by the applicant prior to an action on the merits. See 37 CFR 1.142(a). The PTO is considering amending restriction practice to provide, by rule, that if claims to more than one independent and distinct related ......
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Pfizer Inc. v. Teva Pharmaceuticals Usa, Inc., No. CIV.A. 04-754(JCL).
...16, 17, 38, 39, and the subject matter of claims 22, 23, 25, 26, 28, 29, 31-37, and 41-46 stands withdrawn from consideration under 37 CFR 1.142(b) as constituting other patentably distinct The withdrawn subject matter of claims 2-14, 16, 17, 38, and 39 is properly restricted as said subjec......
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Univ. of Mass. v. Kappos, Civil Action No. 10–00894 (ESH).
...are claimed in one application, the Director may require the application to be restricted to one of the inventions.”) See also37 C.F.R. § 1.142. In the first restriction requirement issued in this matter, the Examiner divided the claims into ten different groups, each of which was purported......
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Henkel Corp. v. Coral, Inc., No. 89 C 3385.
...predecessor. The PTO Examiner's first Office Action required a restriction between the cleaning compositions and processes under 37 C.F.R. § 1.142 and 35 U.S.C. § 121. The restriction reflected the PTO's expert determination that "two or more independent and distinct inventions are claimed ......
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426 cases
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Pfizer Inc. v. Teva Pharmaceuticals Usa, Inc., No. CIV.A. 04-754(JCL).
...16, 17, 38, 39, and the subject matter of claims 22, 23, 25, 26, 28, 29, 31-37, and 41-46 stands withdrawn from consideration under 37 CFR 1.142(b) as constituting other patentably distinct The withdrawn subject matter of claims 2-14, 16, 17, 38, and 39 is properly restricted as said subjec......
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Univ. of Mass. v. Kappos, Civil Action No. 10–00894 (ESH).
...are claimed in one application, the Director may require the application to be restricted to one of the inventions.”) See also37 C.F.R. § 1.142. In the first restriction requirement issued in this matter, the Examiner divided the claims into ten different groups, each of which was purported......
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Henkel Corp. v. Coral, Inc., No. 89 C 3385.
...predecessor. The PTO Examiner's first Office Action required a restriction between the cleaning compositions and processes under 37 C.F.R. § 1.142 and 35 U.S.C. § 121. The restriction reflected the PTO's expert determination that "two or more independent and distinct inventions are claimed ......
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Biogen Ma, Inc. v. Japanese Found. for Cancer Research, No. 2014–1525.
...examiner thought that there were “two or more independent and distinct inventions” claimed in a single application. 35 U.S.C. § 121 ; 37 C.F.R. § 1.142 ; MPEP § 802.01 (9th ed. March 2014). Restriction requirements are discretionary decisions, primarily for administrative convenience, and d......
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4 firm's commentaries
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Protection of Designs in the United States
...sale and each would be patentable over the other if the other were prior art (and the only prior art) against it. [77] 37 CFR 1.141. [78] 37 CFR 1.142. [79] Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC,739 F.3d 694,109 USPQ2d. 1225 [80]Warner- Jenkinson Co. v. Hilton Davis Che......
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Biogen MA, Inc. v. Japanese Foundation for Cancer Research (Fed. Cir. 2015)
...thought that there were 'two or more independent and distinct inventions' claimed in a single application," citing 35 U.S.C. § 121; 37 C.F.R. § 1.142; MPEP § 802.01. The panel characterizes restriction requirements as being "primarily for administrative convenience" and as "not represent[in......
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United States Patent Rule Changes Effective - November 1, 2007
...from a continuation or a voluntary divisional, which, as noted above, is now considered to be a continuation application. A change in 37 CFR 1.142 gives the examiner discretion as to whether to require restriction or division if two or more independent and distinct inventions are claimed in......
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Changes to Patent Practice: The USPTO’s New Rules to Shorten Patent Prosecution Time
...If an application contains claims to more than one invention, applicants may file a Suggested Requirement for Restriction (SRR) under 37 C.F.R. § 1.142(c). A SRR must be accompanied by an election of an invention to no more than 5/25 claims, and must be filed before the earlier of a FAOM or......