Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting

Restriction Requirement — 35 USC 121 / MPEP 806 Examiner may require applicant to elect one invention when application claims two or more independent and distinct inventions. Two-part test: (1) inventions are independent or distinct, AND (2) serious search and examination burden. Applicant may traverse restriction with petition — not an appeal.

Independence vs Distinctness — MPEP 806.05 Independent: no disclosed relationship between inventions. Distinct: related but patentably distinct — each requires separate prior art search. Combination/subcombination: distinct if subcombination has separate utility and combination does not require subcombination. Product/process: distinct if process is not limited to making the product AND product can be made by another process.

Election and Traversal — MPEP 821 Applicant must elect one invention. Traverse must be made at time of election or it is waived. Non-elected claims held in abeyance — not examined. Divisional application can claim non-elected invention with benefit of parent filing date.

Unity of Invention — PCT — MPEP 1850 International standard: single general inventive concept linking all claims. More permissive than US restriction practice. Lack of unity objection in international phase does not bind national stage examination.

Double Patenting — MPEP 804 Statutory (same invention): same claims in two patents — cannot be overcome, one must be abandoned. Obviousness-type (ODP): claims in second patent obvious over first patent claims — overcome by filing terminal disclaimer. Terminal disclaimer: dedicates second patent term so it expires same day as first patent, requires common ownership.

Obviousness-Type Double Patenting — MPEP 804.02 ODP does not require same applicant — applies across commonly owned applications. Filing terminal disclaimer overcomes ODP — also requires patents remain commonly owned. Cannot overcome statutory double patenting with terminal disclaimer.