How does the introduction of species claims affect a patent application with only generic claims?
The introduction of species claims to a patent application that initially contained only generic claims can lead to a requirement for election of species. According to MPEP 818.02(b):
“Where only generic claims are first presented and prosecuted in an application in which no election of a single species of that genus or of a group of patentably indistinct species has been required, and applicant later presents species claims to two or more independent or distinct species of the invention, the examiner may require applicant to elect a single species or of a group of patentably indistinct species.”
This means that:
- The application’s examination may be narrowed to focus on a specific species or group of patentably indistinct species
- The applicant will need to choose which species to pursue in the current application
- The generic claims may still provide broader protection
- Other species may need to be pursued in divisional applications
This process helps streamline the examination while allowing the applicant to maintain potential rights to other species within the genus.
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