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

A restriction may occur when a single application claims two or more independent and distinct inventions within it. The PTO requires applicants to “restrict” their application to only one invention.
Chapter 800 outlines the requirements for a restriction including independence (when the subjects in question are not connected in design, operation or effect) distinctness (when there is a relationship between the subjects in question, but they are capable of separate manufacture and are patentable over one another), and many obscure details concerning the topics of restriction and double patenting.
The topic of restrictions is one of the most complicated areas of the MPEP. Fortunately, this subject is not tested too heavily on the bar exam. However, you may expect a tricky question relating to species, the differences between double patenting and 35 U.S.C. 102/103 rejections, and possibly a question related to the determination of distinctness or independence of claimed inventions.

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- Click on image to see full-size view or download the mindmap PDF.
- Download the PDF outline.

- Understand the species concept.
- Learn the basics of double patenting.
- Become familiar with the distinctness or independence of claimed inventions.
- Know the following laws and rules:
37 C.F.R. 1.129 |
Transitional procedures for limited examination after final rejection and restriction practice. |
37 C.F.R. 1.141 |
Different inventions in one national application. |
37 C.F.R. 1.142 |
Requirement for restriction. |
37 C.F.R. 1.321 |
Statutory disclaimers, including terminal disclaimers. |
35 U.S.C. 121 |
Divisional applications. |

- Distinct inventions
- Divisional applications
- Domination
- Double patenting
- Elected species
- Independent inventions
- Nonelected invention
- Restriction
- Terminal disclaimer