818 Election and Reply [R-07.2022]
Election is the designation by applicant of the one of two or more inventions or patentably distinct species, or of the group of patentably indistinct species, that will be prosecuted in the application. See MPEP § 803.02.
When two or more independent and distinct inventions are presented for examination, the examiner may make a restriction requirement if a serious search and/or examination burden exists. In the reply to the restriction requirement, applicant must elect one invention for examination. If applicant wishes to traverse the restriction requirement, the reply must also include a traversal with specific reasons why applicant believes the restriction requirement is in error. See 37 CFR 1.111 and MPEP § 818.01. Applicant must make their own election; the examiner will not make the election for the applicant.
Election becomes fixed when the claims in an application have received an action on their merits by the Office. If, after receiving an action on the merits of an invention, one or more properly divisible additional inventions are subsequently presented for examination, the examiner may deem the examined invention to be the invention elected by original presentation. See MPEP § 818.02(a).
818.01 Election in Reply to a Restriction Requirement: Express [R-07.2022]
37 CFR 1.143 Reconsideration of requirement.
If the applicant disagrees with the requirement for restriction, he may request reconsideration and withdrawal or modification of the requirement, giving the reasons therefor. (See § 1.111). In requesting reconsideration the applicant must indicate a provisional election of one invention for prosecution, which invention shall be the one elected in the event the requirement becomes final. The requirement for restriction will be reconsidered on such a request. If the requirement is repeated and made final, the examiner will at the same time act on the claims to the invention elected.
Election in reply to a requirement for restriction may be made either with or without an accompanying traverse of the requirement. A complete reply to a restriction requirement must include an election even if applicant traverses the requirement.
A traverse is a request for reconsideration of a requirement to restrict that must include a written statement of the reasons for traverse, distinctly and specifically pointing out the supposed errors upon which the applicant relies for concluding that the requirement is in error. The absence of any statement indicating whether the requirement to restrict is traversed or the failure to provide reasons for traverse will be treated as an election without traverse.
Where a rejection or objection is included with a restriction requirement, applicant, besides making a proper election, must also distinctly and specifically point out any supposed errors in the examiner’s rejection or objection, or amend and argue that as amended the objection or rejection is moot. See 37 CFR 1.111.
Applicant must make their own election; the examiner will not make the election for the applicant. See 37 CFR 1.142 and 37 CFR 1.143.
818.01(a) Reply Must be Complete [R-07.2015]
As indicated in the first sentence of 37 CFR 1.143, the traverse to a requirement for restriction must be complete as required by 37 CFR 1.111(b). Under this rule, the applicant is required to specifically point out the reason(s) on which he or she bases his or her conclusion(s) that a requirement to restrict is in error. A mere broad allegation that the requirement is in error does not comply with the requirement of 37 CFR 1.111. Thus the required provisional election (see MPEP § 818.01(b)) becomes an election without traverse if accompanied by an incomplete traversal of the requirement for restriction.
818.01(b) Election is Required, Even When Requirement Is Traversed [R-07.2015]
As noted in the second sentence of 37 CFR 1.143, a provisional election must be made even if the requirement is traversed.
All requirements for restriction, other than those containing only an election of species, should include form paragraph 8.21. For election of species, form paragraph 8.01 or 8.02 should be used. These form paragraphs include the above notice.
818.01(c) Traverse is Required To Preserve Right of Petition [R-07.2022]
37 CFR 1.144 Petition from requirement for restriction.
After a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested (see § 1.181).
To preserve the right to petition from the requirement for restriction, including an election of species requirement, all errors to be relied upon in the petition must be distinctly and specifically pointed out in a timely filed traverse by the applicant. The petition may be deferred until after final action on or allowance of the claims to the elected invention. In any event, the petition must not be filed later than the filing date of the notice of appeal. If applicant does not distinctly and specifically point out supposed errors in the restriction requirement, the election should be treated as an election without traverse and be so indicated to the applicant by use of form paragraph 8.25.02.
¶ 8.25.02 Election Without Traverse Based on Incomplete Reply
Applicant’s election of [1] in the reply filed on [2] is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
818.01(d) Traverse of Restriction Requirement With Linking Claims [R-07.2015]
Regardless of the presence of a linking claim, a proper traverse must include a written statement of the reasons for traverse, distinctly and specifically pointing out the supposed errors upon which the applicant relies for his or her conclusion that the requirement is in error. If restriction is made final following consideration of a traverse, the right to petition is preserved even if all linking claims are canceled. When a final restriction requirement is contingent on the nonallowability of the linking claims, applicant may petition from the requirement under 37 CFR 1.144 without waiting for a final action on the merits of the linking claims or applicant may defer his or her petition until the linking claims have been finally rejected, but not later than the notice of appeal. See 37 CFR 1.144 and MPEP § 818.01(c).
An election combined with an argument that the linking claim is allowable is not a traversal of the restriction requirement. The Office considers such a response to be a concession that restriction is proper if the linking claim is not allowable. If the linking claim is allowable, the restriction is improper and should be withdrawn. If the Office allows the linking claim, the restriction requirement must be withdrawn and claims to all linked inventions that depend from or otherwise include all the limitations of the allowable linking claim must be acted upon.
818.02 Election Other Than Express [R-07.2015]
Election may be made in ways other than by explicitly or expressly identifying the elected invention or in reply to a requirement as set forth in MPEP § 818.02(a) and § 818.02(d).
818.02(a) Election By Originally Presented Claims [R-07.2015]
Where claims to another invention are properly added and entered in the application before the earlier of the mailing of a first restriction requirement or the mailing of a first Office action on the merits, those claims, along with the ones presented upon filing the application, will be considered originally presented claims for purposes of restriction only.
The claims originally presented and acted upon by the Office on their merits determine the invention elected by an applicant in the application, and in any request for continued examination (RCE) filed for the application. Subsequently presented claims to an invention other than that acted upon should be treated as provided in MPEP § 821.03.
For reissue practice, see MPEP Chapter 1400.
818.02(b) Generic Claims Only — No Election of Species; Linking Claims Only – No Election of Invention [R-07.2022]
Where only generic claims are first presented and prosecuted in an application in which no election of a single species of that genus or of a group of patentably indistinct species has been required, and applicant later presents species claims to two or more independent or distinct species of the invention, the examiner may require applicant to elect a single species or of a group of patentably indistinct species. The practice of requiring election of species in cases with only generic claims is discussed in MPEP § 808.01(a). Where only linking claims are first presented and prosecuted in an application in which no election of a single linked invention has been made, and applicant later presents claims to two or more linked, independent or distinct inventions, the examiner may require applicant to elect a single invention.
818.02(c) Election By Optional Cancelation of Claims [R-07.2015]
Where applicant claims two or more independent or distinct inventions and as a result of amendment to the claims, he or she cancels the claims to one or more of such inventions, leaving claims to one invention, and such claims are acted upon by the examiner, the claimed invention thus acted upon is elected.
818.02(d) Election By Cancelation of Claims, Lacking Express Election Statement [R-07.2015]
If applicant’s reply to a requirement for restriction does not expressly state the invention elected, but cancels claims to all but one of the inventions, the remaining invention will be deemed to be the elected invention.
