What is the relationship between generic claims and species restriction in patent applications?

The presence of generic claims in a patent application can significantly impact the examiner’s ability to require a species restriction. The MPEP provides specific guidance on this relationship:

As stated in MPEP 808.01(a): “In applications where only generic claims are presented, restriction cannot be required unless the generic claims recite or encompass such a multiplicity of species that an unduly extensive and burdensome search would be necessary to search the entire scope of the claim.”

This guideline has several important implications:

• The presence of a generic claim that encompasses multiple species can prevent a restriction requirement.
• Examiners must consider the search burden when deciding whether to restrict in applications with only generic claims.
• If a generic claim is found allowable, it can lead to the rejoinder of previously withdrawn species claims.

The MPEP further advises: “In all applications where a generic claim is found allowable, the application should be treated as indicated in MPEP § 809 and § 821.04(a).” This means that allowance of a generic claim can lead to consideration of previously non-elected species.

To learn more:

• generic claims
• species restriction
• patent examination
• MPEP