How does the USPTO handle provisional elections in Markush claim examination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs 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. The USPTO handles provisional elections in Markush claim examination by allowing applicants to make a provisional election of species. According to MPEP 803.02 : “As an example, in the case of an application with a Markush claim drawn to the compound X-R, wherein R is a radical selected from the group consisting of A, B, C, D, and E, the examiner may require a provisional election of a single species, XA, XB, XC, XD, or XE. The Markush claim would then be examined fully with respect to the elected species and any species considered to be clearly unpatentable over the elected species.” This provisional election allows the examiner to focus the initial search and examination on a specific species while maintaining the applicant’s right to pursue other species later in prosecution. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Provisional Election of Species A Required MPEP 803.02 Examiner May Require Provisional Election of Patentably Indistinct Species MPEP 803.02 Permitted Provisional Election of Species for Markush Claims MPEP 803.02 Permitted Requirement for Provisional Election of Species MPEP 803.02 Requirement for Provisional Election of Species MPEP 803.02 Requirement for Provisional Election of Species if Applicant Declines Telephone Election MPEP 803.02 Provisional Election of Species Requirement Separate from First Office Action on Merits Must Not Include Rejection Based on Improper Markush Grouping MPEP 803.02 Required Provisional Election of Species Must Not Include Improper Markush Grouping Rejection MPEP 803.02 Recommended Examiner May Require Election from Patentably Indistinct Species in Markush Claims MPEP 803.02 Election of Species Is Required...