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