Skip over navigation

811    Time for Making Requirement [R-08.2012]

37 CFR 1.142(a), second sentence, indicates that a restriction requirement “will normally be made before any action upon the merits; however, it may be made at any time before final action .” This means the examiner should make a proper requirement as early as possible in the prosecution, in the first action if possible, otherwise, as soon as the need for a proper requirement develops.

Before making a restriction requirement after the first action on the merits, the examiner will consider whether there will be a serious burden if restriction is not required.

811.01   [Reserved]

811.02   New Requirement After Compliance With Preceding Requirement [R-08.2012]

Since 37 CFR 1.142(a) provides that restriction is proper at any stage of prosecution up to final action, a second requirement may be made when it becomes proper, even though there was a prior requirement with which applicant complied. Ex parte Benke, 1904 C.D. 63, 108 O.G. 1588 (Comm’r Pat. 1904).

811.03   Repeating After Withdrawal Proper [R-08.2012]

Where a requirement to restrict is made and thereafter withdrawn as improper, if restriction becomes proper at a later stage in the prosecution, restriction may again be required.

811.04   Proper Even Though Grouped Together in Parent Application [R-08.2012]

Even though inventions are grouped together in a requirement in a parent application, restriction or election among the inventions may be required in the divisional applications, if proper.



United States Patent and Trademark Office
This page is owned by Patents.
Last Modified: 03/27/2014 10:10:36