What constitutes a serious search and/or examination burden in an Election of Species requirement?

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.

In an Election of Species requirement, the examiner must establish that there is a serious search and/or examination burden if all species were to be examined together. According to the MPEP 809.02, a serious search and/or examination burden can be demonstrated by one or more of the following reasons:

1. The species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification
2. The species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter
3. The species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries)

The MPEP provides specific guidance for examiners in form paragraph 8.01: “There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4].” In this paragraph, the examiner is required to insert the applicable reasons for the search and/or examination burden.

Additionally, for examination burdens, the MPEP notes that non-prior art issues, such as those under 35 U.S.C. 101, 35 U.S.C. 112(a), or pre-AIA 35 U.S.C. 112, first paragraph, that are relevant to one species but not to others can constitute a serious examination burden.