Petition for Rejoinder Under 37 C.F.R. § 1.144

Summary

This petition template may be used to request rejoinder of withdrawn claims under 37 C.F.R. § 1.144, typically after prosecution on the merits of the patent application has closed, but before allowance. This template includes practical guidance and drafting notes. 37 C.F.R. § 1.144 provides as follows: After a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested (see § 1.181). Under 35 U.S.C. § 121, if two or more independent and distinct inventions are claimed in a single patent application, the USPTO may require the application to be restricted to one of the inventions. Also, when a patent application includes a generic claim to a generic invention (i.e., a "genus") along with claims directed to embodiments or species that could fall within the scope of the generic claim, the patent examiner may make a restriction requirement between independent or distinct species. See Manual of Patent Examining Procedure 806.04 and 37 C.F.R. § 1.146. If your response to a restriction requirement includes an argument that the examiner's restriction requirement is erroneous (i.e., if you responded "with traverse"), you may later file a petition requesting rejoinder of any non-elected claims. Rejoinder means withdrawal of a restriction requirement between an allowable elected invention and a non-elected invention and leads to the examination of a formerly nonelected invention on the merits. You may decide to petition for rejoinder as a more cost-effective alternative than canceling the claims and filing a subsequent divisional application directed to the canceled claims. Note that a restriction requirement is not an appealable matter. Thus, if the examiner is not persuaded during prosecution that the claims should be rejoined, relief must be requested by petition (rather than appeal). Note that a petition under 37 C.F.R. § 1.144 can only be filed if the election of a claim group was made with traverse. If an election was made without traverse, the applicant does not have the right to petition the restriction requirement. In most cases, a petition for rejoinder under 37 C.F.R. § 1.144 is filed in response to an Ex parte Quayle office action (an office action that closes the prosecution of the application), in which the examiner states that the only remaining issue before allowance is that the withdrawn claims must be canceled. A request for rejoinder can be made directly to the examiner, but if that request fails, a petition for rejoinder under 37 C.F.R. § 1.144 is the only other route to rejoin the claims rather than cancel them. A petition under 37 C.F.R. § 1.144 follows the rules laid out in 37 C.F.R. § 1.181. Although the restriction requirement cannot be appealed, other issues raised during prosecution may still be appealed. If an appeal is filed in the application, the petition under 37 C.F.R. § 1.144 must be filed before the filing of the notice of appeal. Since no fee is required with this petition, it is typically worth trying to obtain rejoinder via a petition under 37 C.F.R. § 1.144, rather than simply canceling the claims and filing a divisional application for the canceled claims. It is important that your petition is correctly filed and displayed in the file history. You should, therefore, include the following caption in a header on each page of your response: Attorney Docket No. [attorney docket number] Application No. [application number] Mail Stop PETITION Each page should also be numbered to ensure that every page has been properly filed and to facilitate reference a particular page of a response in later prosecution, if necessary. For a template that you may use to respond to a restriction requirement, see Office Action Response (Restriction Requirement).