What is the relationship between generic claims and species restriction in patent applications?

This page is an FAQ based on guidance 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.

The presence of generic claims in a patent application can significantly impact the examiner’s ability to require a species restriction. The MPEP provides specific guidance on this relationship:

As stated in MPEP 808.01(a): “In applications where only generic claims are presented, restriction cannot be required unless the generic claims recite or encompass such a multiplicity of species that an unduly extensive and burdensome search would be necessary to search the entire scope of the claim.”

This guideline has several important implications:

• The presence of a generic claim that encompasses multiple species can prevent a restriction requirement.
• Examiners must consider the search burden when deciding whether to restrict in applications with only generic claims.
• If a generic claim is found allowable, it can lead to the rejoinder of previously withdrawn species claims.

The MPEP further advises: “In all applications where a generic claim is found allowable, the application should be treated as indicated in MPEP § 809 and § 821.04(a).” This means that allowance of a generic claim can lead to consideration of previously non-elected species.