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- 821-Treatment of Claims Held To Be Drawn to Nonelected Inventions
Applicant is given TWO MONTHS from the date of this letter to cancel the noted claims or take other appropriate action (37 CFR 1 144) Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner’s Amendment and pass the case to issue
- What happens to non-elected claims after a restriction requirement is . . .
According to MPEP 821 04 (a): “Claims that require all the limitations of an allowable claim will be rejoined and fully examined for patentability in accordance with 37 CFR 1 104 Claims that do not require all the limitations of an allowable claim remain withdrawn from consideration ”
- MPEP 821. 04 (b) - BitLaw
If the process claims would be rejected, applicant may be called before mailing a new Office action and given the opportunity to cancel the process claims and to place the application in condition for allowance with the allowable product claims
- 714-Amendments, Applicant’s Action
Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application
- MPEP 714: Amendments, Applicant’s Action, November 2024 (BitLaw)
Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application
- Can cancelled claims to nonelected invention be reinstated?
Yes, under certain circumstances, cancelled claims to nonelected invention can be reinstated The process and conditions for reinstatement are detailed in the Manual of Patent Examining Procedure (MPEP)
- Rejoinder of non-elected claims after Notice of Allowance
If this is not the case and the withdrawn claims are indeed commensurate in scope with the elected allowed claims (and have no other issues), then the examiner really should rejoin the claims and further search the additional species (claims)
- 818-Election and Reply
If the Office allows the linking claim, the restriction requirement must be withdrawn and claims to all linked inventions that depend from or otherwise include all the limitations of the allowable linking claim must be acted upon
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