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819    Office Generally Does Not Permit Shift [R-08.2012]

The general policy of the Office is not to permit the applicant to shift to claiming another invention after an election is once made and action given on the elected subject matter. Note that the applicant cannot, as a matter of right, file a request for continued examination (RCE) to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right). When claims are presented which the examiner holds are drawn to an invention other than the one elected, he or she should treat the claims as outlined in MPEP § 821.03.

Where a continued prosecution application (CPA) filed under 37 CFR 1.53(d) is a continuation of its parent application and not a divisional, an express election made in the prior (parent) application in reply to a restriction requirement carries over to the CPA unless otherwise indicated by applicant. In no other type of continuing application does an election carry over from the prior application. See Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004)(An original restriction requirement in an earlier filed application does not carry over to claims of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent application.).

Where a genus claim is allowable, applicant may prosecute a reasonable number of additional species claims thereunder, in accordance with 37 CFR 1.141.

Where an interference is instituted prior to an applicant’s election, the subject matter of the interference issues is not elected. An applicant may, after the termination of the interference, elect any one of the inventions claimed.



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Last Modified: 03/27/2014 10:10:36