What happens when only generic claims are presented in a patent application?
When only generic claims are initially presented in a patent application, MPEP 818.02(b) provides guidance:
- If species claims are later presented, the examiner may require the applicant to elect a single species or a group of patentably indistinct species.
- This practice is further discussed in MPEP § 808.01(a).
The MPEP states: “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 allows the examiner to narrow the scope of examination when specific species are claimed after initial generic claims.
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