37 CFR § 1.146 — Election of species. (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.146 Election of species.
This page consolidates MPEP guidance interpreting 37 CFR § 1.146, including 6 rules 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.
Summary
This section outlines the proper treatment of claims retained after an election of species, ensuring they are addressed in accordance with MPEP §§821 to 821.04(b), and highlights key obligations for practitioners.
What this section covers
- Defines how claims not elected during an election of species requirement should be treated.
- Instructs on the proper handling and addressing of all claims in response to office actions.
Key obligations
- Treat claims retained after an election of species as per MPEP §§821 to 821.04(b).
Practice notes
- Draft and file responses clearly identifying all claims to avoid missing any during office action responses.
- Avoid the pitfall of failing to address claims that were not elected during the election of species requirement.
Official MPEP § 1.146 — Election of species.
Source: USPTOLast Modified: 10/30/2024 08:50:22
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.
[43 FR 20465, May 11, 1978; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]
- Examination Procedure
- Restriction Practice
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- Election Requirement
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| MPEP Section | Rules |
|---|---|
| MPEP § 707.07(i) | |
| MPEP § 803.03 | |
| MPEP § 806.04 |