What should applicants do when faced with a species restriction requirement?

When faced with a species restriction requirement, applicants should take the following steps:

1. Review the requirement: Carefully review the examiner’s reasons for the restriction and ensure it meets the criteria outlined in MPEP 808.01(a).
2. Elect a single species: As stated in the MPEP, “When a requirement for restriction between either independent or distinct species is made, applicant must elect a single disclosed species even if applicant disagrees with the examiner’s restriction requirement.”
3. Consider traversing: If you believe the restriction is improper, you can traverse the requirement while still making an election.
4. Identify generic claims: Identify any generic claims that encompass the elected species.
5. Prepare for examination: Be prepared to argue for the examination of additional species if the elected species is found allowable.

Remember, as per MPEP 808.01(a), “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 if a generic claim is allowed, you may be entitled to examination of additional species.

To learn more:

• species restriction
• patent application
• MPEP
• applicant response