How does the examiner determine if a Markush claim is allowable?

How does the examiner determine if a Markush claim is allowable?

To determine if a Markush claim is allowable, the examiner follows these steps:

  • Examines the elected species for patentability
  • If the elected species is not allowable, rejects the Markush claim
  • If the elected species is allowable, examines the Markush claim for full scope of the claim

As stated in MPEP 803.02:

“If the elected species is found to be unpatentable, the provisional election will be given effect and examination will be limited to the Markush claim and claims to the elected species, with claims drawn to species patentably distinct from the elected species held withdrawn from further consideration.”

If the examiner determines that the elected species is allowable, they will then examine the full scope of the Markush claim to ensure it meets all patentability requirements.

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Tags: allowability, markush claims, patent examination, Species Election