812.01 Telephone Restriction Practice [R-07.2015]

812.01 Telephone Restriction Practice [R-07.2015]

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 Claim [6] withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.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.

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 cancellation of the nonelected claims, 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 his or her 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.

Where the respective inventions would be examined in different Technology Centers (TCs), the requirement for restriction should be made only after consultation with and approval by all TCs involved. If an oral election would cause the application to be examined in another TC, the initiating TC should transfer the application with appropriate documentation of the restriction requirement and a record of the interview. The receiving TC will incorporate the substance of this documentation in the next Office action as indicated above. Differences as to restriction should be settled by the existing chain of command, e.g., supervisory patent examiner or TC director.

This 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.