Can a Markush claim be rejoined after being withdrawn due to a nonelected species?
Can a Markush claim be rejoined after being withdrawn due to a nonelected species?
Yes, a Markush claim can be rejoined after being withdrawn due to a nonelected species under certain conditions. The process for rejoinder is as follows:
- If the elected species is found allowable
- The examiner extends the search to nonelected species
- If no prior art is found against the full scope of the claim
- The Markush claim may be allowed
The MPEP 803.02 states:
“If the examiner determines that the elected species is allowable over the prior art, the examination of the Markush claim will be extended. If prior art is then found that anticipates or renders obvious the Markush claim with respect to a nonelected species, the Markush claim shall be rejected; claims to the nonelected species would still be held withdrawn from further consideration. The prior art search will not be extended unnecessarily to cover all nonelected species, and need not be extended beyond a proper Markush grouping.”
This means that if the elected species is allowable, the examiner will gradually expand the search to other species within the Markush claim. If no prior art is found against the full scope of the claim, it may be allowed, effectively rejoining all species within the claim.
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