What happens if the examiner finds prior art that reads on the elected species in a Markush claim?

What happens if the examiner finds prior art that reads on the elected species in a Markush claim?

If the examiner finds prior art that reads on the elected species in a Markush claim, the following actions are taken:

• The Markush claim is rejected
• The examination is limited to the elected species
• Other species are withdrawn from consideration

According to MPEP 803.02:

“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to a nonelected species, the Markush claim shall be rejected; claims to the nonelected species would still be held withdrawn from further consideration.”

This means that if the elected species is found to be unpatentable, the examination focuses solely on that species and the Markush claim. Claims to other species are not examined at this stage unless the elected species is later found allowable.

To learn more:

• Markush claims
• prior art
• elected species
• patent examination