What is the difference between species and generic claims in patent applications?

In patent applications, the distinction between species claims and generic claims is crucial, especially when dealing with Election of Species requirements. According to the MPEP 806.04(d):

• A generic claim is a claim that encompasses a plurality of distinct species.
• A species claim is a claim that is limited to a specific embodiment or species within a broader genus.

In the context of an Election of Species requirement, the MPEP 809.02 instructs examiners to: “Identify generic claims or indicate that no generic claims are present.“

For example, if an application discloses multiple species of a device, a generic claim might broadly cover the basic structure common to all species, while species claims would each be limited to the specific features of a particular embodiment.

Understanding this distinction is important because:

1. Generic claims, if allowable, can provide broader protection.
2. The presence of an allowable generic claim can lead to the rejoinder of withdrawn species claims.
3. In an Election of Species requirement, applicants are typically required to elect a species for examination, but generic claims are examined along with the elected species.

To learn more:

• Patent Claims
• Generic Claims
• Species Claims
• Claim Scope