Section 121 of the statute (35 USC 121) begins as
follows:
If two or more independent and distinct inventions
are
claimed in one application, the Director may require the
application to be
restricted to one of the inventions.
Note that the Director
may require the application to be divided up, so that there is
one
application per independent and distinct invention.
But the Director is not
obliged to require this, so
the patent may legally issue with more than
one
invention.
Moreover the authority of the Director is limited
to the
case where the inventions are independent
and distinct. This would not
be the case with
a patent application with claims to a method, and
other claims
to a system for carrying out the method.
The inventions are not independent and
distinct in
that case.
The invention, for the purposes of
determining
infringement and prior art at least, is the union of
all the regions
of Invention Space contained within the
“metes and bounds” of the
applicable claims.
One could argue that there must also be points of
novelty and inventive concepts, and everything within the
bounds of the claims
should read on these—but that, to the best of my knowledge, is not a
requirement currently required under procedures and case law at present.
The
Mayo opinion may start the process of reintroducing such considerations
(back) into the law.
(Standard disclaimer: IANAL)
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