What constitutes a serious search and/or examination burden in an Election of Species requirement?

In an Election of Species requirement, the examiner must establish that there is a serious search and/or examination burden if all species were to be examined together. According to the MPEP 809.02, a serious search and/or examination burden can be demonstrated by one or more of the following reasons:

1. The species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification
2. The species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter
3. The species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries)

The MPEP provides specific guidance for examiners in form paragraph 8.01: “There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4].” In this paragraph, the examiner is required to insert the applicable reasons for the search and/or examination burden.

Additionally, for examination burdens, the MPEP notes that non-prior art issues, such as those under 35 U.S.C. 101, 35 U.S.C. 112(a), or pre-AIA 35 U.S.C. 112, first paragraph, that are relevant to one species but not to others can constitute a serious examination burden.

To learn more:

• Search Burden
• Examination Burden
• USPTO Procedure
• Patent Examination