Can an applicant request examination of additional species after an initial election?
Yes, an applicant can request examination of additional species after an initial election under certain circumstances. The MPEP 809.02 provides guidance on this topic:
“If applicant presents species claims to more than one patentably distinct species of the invention after an Office action on only generic claims, with no restriction requirement, the Office may require the applicant to elect a single species for examination.”
Requesting examination of additional species can be done through:
- Petition for rejoinder: If a generic claim is found allowable, applicant can request rejoinder of previously withdrawn species claims.
- Amendment introducing new species: Applicant can introduce claims to additional species, but these may be subject to further restriction.
- Argument of obviousness: Demonstrating that additional species are obvious variants of the elected species may lead to their examination.
However, the decision to examine additional species ultimately rests with the examiner, who will consider factors such as search burden and the state of the prior art. Applicants should be prepared to provide arguments or evidence supporting the examination of additional species.
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