MPEP Section 821, Treatment of Claims Held To Be Drawn to Nonelected Inventions

Executive summary:

This document contains Section 821 ("Treatment of Claims Held To Be Drawn to Nonelected Inventions") of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Eighth Revision (July 2010). This page was last updated in January 2011. You may return to the section index to find a particular section. Alternatively, you may search the MPEP using the search box that appears on the left side of every page of BitLaw--you may restrict your search to the MPEP on the search results page.

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821 Treatment of Claims Held To Be Drawn to Nonelected Inventions [R-3]

Claims held to be drawn to nonelected inventions, including claims **>drawn to nonelected species or inventions that may be eligible for rejoinder<, are treated as indicated in MPEP § 821.01 through § *>821.04<.

The propriety of a requirement to restrict, if traversed, is reviewable by petition under 37 CFR 1.144. In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971).

All claims that the examiner holds as not being directed to the elected subject matter are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP ** § 821.01 through § *>821.04<. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement.