C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 1—RULES OF PRACTICE IN PATENT CASES › Subpart B—National Processing Provisions

37 C.F.R. § 1.145

Subsequent presentation of claims for different invention

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If, after an Office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144.

[74 FR 52691, Oct. 14, 2009]
Notes of Decisions
Cited in 5 cases (2 in the last 5 years), 2003–2021 · leading case: Hyatt v. Iancu
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Hyatt v. Iancu (2018) cadc · cites it 2× “18, and 37 C.F.R. § 1.145 . PTO policy is that, absent entry of a restriction requirement, undue multiplicity rejection, or prosecution laches rejection, applicants are entitled to an examination of the claims presented in a single application, including claims directed to…”
Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC (2003) cafc “37 C.F.R. § 1.145 (1978) (emphasis added).”
Hyatt v. Matal (2018) dcd · cites it 3× “18, and 37 C.F.R. §1.145 . PTO policy is that, absent entry of a restriction requirement, undue multiplicity rejection, or prosecution laches rejection, applicants are entitled to an examination of 18 the claims presented in a single application, including claims directed to…”
Hyatt v. Hirshfeld (2021) cafc “, shifting, claims in large portions or in their entirety contrary to 37 C.F.R. § 1.145 ; (iii) presenting numerous duplicate or patentably indistinct claims across applications without in- forming the PTO contrary to MPEP §§ 2001.”
Hyatt v. Hirshfeld (2021) cafc “, shifting, claims in large portions or in their entirety contrary to 37 C.F.R. § 1.145 ; (iii) presenting numerous duplicate or patentably indistinct claims across applications without in- forming the PTO contrary to MPEP §§ 2001.”
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