How can I determine if a claim is truly generic in a patent application?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Determining whether a claim is truly generic in a patent application requires careful analysis. The MPEP 806.04(d) provides guidance on this matter:

“In an application presenting three species illustrated, for example, in Figures 1, 2, and 3, respectively, a generic claim should read on each of these views; but the fact that a claim does so read is not conclusive that it is generic. It may define only an element or subcombination common to the several species.“

To determine if a claim is truly generic:

• Check if the claim covers all disclosed species or embodiments
• Ensure the claim doesn’t include elements specific to only one species
• Verify that each species claim includes all limitations of the potentially generic claim
• Consider whether the claim defines a common element across all species or a true generic invention

Remember, a claim reading on multiple species is not automatically generic. It must encompass the core inventive concept shared by all species without being limited to specific implementations.