812 Who Should Make the Requirement [R-07.2022]
The examiner to which the application has been assigned will make the restriction requirement, unless the classification is not reasonably correct and complete. In this instance the examiner assigned the application will submit a C-Star (C*) classification challenge on the unrestricted application to have the C* classification picture corrected. If the C* challenge is proper, the application may be reassigned to another examiner whose portfolio matches the new classification picture. The newly assigned examiner would then make the restriction requirement, if appropriate.
812.01 Telephone Restriction Practice [R-07.2022]
If an examiner determines that a requirement for restriction should be made in an application, the examiner should formulate a draft of such restriction requirement including an indication of those claims considered to be linking and/or generic. Thereupon, the examiner should telephone the attorney or agent of record and request an oral election, with or without traverse. The examiner should arrange for a second telephone call within a reasonable time, generally within 3 working days, to provide time for the attorney or agent to consider the requirement. If the attorney or agent objects to making an oral election, or fails to respond, a restriction requirement will be mailed, and should contain reference to the unsuccessful telephone call. When an oral election is made, the examiner will then proceed to incorporate into the next Office action a formal restriction requirement including the date of the election, the attorney’s or agent’s name, and a complete record of the telephone interview, followed by a complete action on the elected invention as claimed, including linking and/or generic claims if present. However, no telephone communication need be made where the requirement for restriction is complex, the application is being prosecuted by the applicant pro se, or the examiner knows from past experience that an election will not be made by telephone.
Form paragraphs 8.23 or 8.23.01 should be used to make a telephone election of record.
¶ 8.23 Requirement, When Elected by Telephone
During a telephone conversation with [1] on [2] a provisional election was made [3] traverse to prosecute the invention of [4], claim [5]. Affirmation of this election must be made by applicant in replying to this Office action. Claim [6] withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Examiner Note:
- 1. In bracket 3, insert --with-- or --without--, whichever is applicable.
- 2. In bracket 4, insert either the elected group or species.
- 3. An action on the merits of the claims to the elected invention should follow.
¶ 8.23.01 Requirement, No Election by Telephone
A telephone call was made to [1] on [2] to request an oral election to the above restriction requirement, but did not result in an election being made.
Examiner Note:
- 1. In bracket 1, insert the name of the applicant or attorney or agent contacted.
- 2. In bracket 2, insert the date(s) of the telephone contact(s).
- 3. This form paragraph should be used in all instances where a telephone election was attempted and the applicant’s representative did not or would not make an election.
- 4. This form paragraph should not be used if no contact was made with applicant or applicant’s representative.
Registered attorneys or agents not of record in a patent application should not be contacted for restriction requirements. See MPEP § 408. If an Application Data Sheet lists one or more attorneys or agents under representative information, but a valid power of attorney has not been filed in the application, telephone restriction practice is not permitted, and form paragraph 8.23.03 should be used.
¶ 08.23.03 No Telephone Restriction Permitted, No Attorney or Agent of Record, Practitioner Included in ADS
Telephone restriction practice is not permitted because it appears applicant has legal representation but a valid power of attorney has not been filed in the present application. Providing representative information in an Application Data Sheet (ADS) does not constitute a power of attorney. See 37 CFR 1.76(b)(4) and MPEP § 408. For information on appointing a power of attorney, see MPEP § 402.02et seq.
Examiner Note:
- This form paragraph should be used ONLY when a practitioner or customer number is identified in the ADS but no power of attorney is of record.
If, on examination, the examiner finds the claims to an invention elected without traverse to be allowable and no nonelected invention is eligible for rejoinder (see MPEP § 821.04), the restriction requirement should be attached to the Notice of Allowability form PTOL-37 and should include cancelation of the nonelected claims, and a statement that the prosecution is closed and that a notice of allowance will be sent in due course. Correction of formal matters in the above-noted situation which cannot be handled by a telephone call and thus requires action by the applicant should be handled under the Ex parte Quayle practice, using Office Action Summary form PTOL-326.
Should the elected invention as claimed be found allowable in the first action, and an oral traverse was noted, the examiner should include in the action a statement under MPEP § 821.01, making the restriction requirement final and giving applicant two months to either cancel the claims drawn to the nonelected invention or take other appropriate action. (37 CFR 1.144). Failure to take action will be treated as an authorization to cancel the nonelected claims by an examiner’s amendment and pass the application to issue. Prosecution of the application is otherwise closed.
In either situation (traverse or no traverse), caution should be exercised to determine if any of the allowable claims are linking and/or generic claims, or if any nonelected inventions are eligible for rejoinder (see MPEP § 821.04), before canceling claims drawn to the nonelected invention.
When a telephonic election results in the withdrawal of claims such that the assigned examiner believes that the C* classification picture is incorrect, the examiner should enter a C* classification challenge. In this instance, the examiner must document the complete restriction requirement using the internal “Telephonic Restriction and Election Summary” form indicating: the groups and species of invention(s) and, if necessary, the classification thereof; the claims corresponding to each group; the elected invention and/or species; the date of the election; the applicant or applicant representative making the election; and whether the election was with or without traverse. This form is not mailed and is used only to document the restriction requirement until such time as an action on the merits of the elected claims is mailed. After completion of the form the assigned examiner will submit a C* classification picture challenge indicating that the challenge was the result of an election.
If the C* classification challenge results in the application remaining with the examiner, the examiner will incorporate the written restriction and election into the next Office action. If the C* classification challenge results in the application being reassigned, the newly assigned examiner will document the substance of the internal “Telephonic Restriction and Election Summary” form in the next Office action as indicated above. If the newly assigned examiner disagrees with the original restriction requirement, differences should be settled by the existing chain of command, e.g., supervisory patent examiner or TC Director.
Telephone restriction practice is limited to use by examiners who have at least negotiation authority. Other examiners must have the prior approval of their supervisory patent examiner or their reviewing primary examiner. See MPEP § 707.01.
