What happens if the elected species is not allowable in a Markush claim?
What happens if the elected species is not allowable in a Markush claim?
If the elected species is not allowable in a Markush claim, the examiner will follow a specific procedure outlined in MPEP 803.02:
“If the elected species is not allowable, the examiner should extend the search and examination to the extent necessary to determine patentability of the Markush claim.”
This process involves:
- Determining the next species to be searched and examined
- Continuing this process until either an allowable species is found or the entire claim is determined to be unpatentable
- If no allowable species is found, the examiner should reject the Markush claim as unpatentable over the prior art
The applicant may then present arguments or amendments to overcome the rejection.
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