MPEP § 806.04 — Genus and/or Species Inventions (Annotated Rules)
§806.04 Genus and/or Species Inventions
This page consolidates and annotates all enforceable requirements under MPEP § 806.04, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Genus and/or Species Inventions
This section addresses Genus and/or Species Inventions. Primary authority: 37 CFR 1.141 and 37 CFR 1.146. Contains: 2 permissions and 1 other statement.
Key Rules
Restriction and Election Practice (MPEP Chapter 800)
Where an application includes claims directed to different embodiments or species that could fall within the scope of a generic claim, restriction between the species may be proper if the species are independent or distinct. However, 37 CFR 1.141 provides that an allowable generic claim may link a reasonable number of species embraced thereby. The practice is set forth in 37 CFR 1.146.
Where an application includes claims directed to different embodiments or species that could fall within the scope of a generic claim, restriction between the species may be proper if the species are independent or distinct. However, 37 CFR 1.141 provides that an allowable generic claim may link a reasonable number of species embraced thereby. The practice is set forth in 37 CFR 1.146.
Distinction Between Species
In the first action on an application containing a generic claim to a generic invention (genus) and claims to more than one patentably distinct species embraced thereby, the examiner may require the applicant in the reply to that action to elect a species of his or her invention to which his or her claim will be restricted if no claim to the genus is found to be allowable. However, if such application contains claims directed to more than a reasonable number of species, the examiner may require restriction of the claims to not more than a reasonable number of species before taking further action in the application.
Species Election Requirement (MPEP 808.01)
See MPEP § 806.04(d) for the definition of a generic claim, and MPEP § 806.04(e) for a discussion of claims that include one or more species.
Citations
| Primary topic | Citation |
|---|---|
| Restriction and Election Practice (MPEP Chapter 800) | 37 CFR § 1.141 |
| Restriction and Election Practice (MPEP Chapter 800) | 37 CFR § 1.146 |
| Species Election Requirement (MPEP 808.01) | MPEP § 806.04(d) |
| Species Election Requirement (MPEP 808.01) | MPEP § 806.04(e) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 806.04 — Genus and/or Species Inventions
Source: USPTO806.04 Genus and/or Species Inventions [R-08.2012]
Where an application includes claims directed to different embodiments or species that could fall within the scope of a generic claim, restriction between the species may be proper if the species are independent or distinct. However, 37 CFR 1.141 provides that an allowable generic claim may link a reasonable number of species embraced thereby. The practice is set forth in 37 CFR 1.146.
37 CFR 1.146 Election of species.
In the first action on an application containing a generic claim to a generic invention (genus) and claims to more than one patentably distinct species embraced thereby, the examiner may require the applicant in the reply to that action to elect a species of his or her invention to which his or her claim will be restricted if no claim to the genus is found to be allowable. However, if such application contains claims directed to more than a reasonable number of species, the examiner may require restriction of the claims to not more than a reasonable number of species before taking further action in the application.
See MPEP § 806.04(d) for the definition of a generic claim, and MPEP § 806.04(e) for a discussion of claims that include one or more species.