Election of species requirement:
Election of species is part of restriction practice in the prosecution/examination of U.S. patent applications. Restriction practice is a tool used by Examiners to divide up an application into more manageable portions to expedite examination.
An election of species is often required in situations where an Examiner has determined, or at least asserts, that an application discloses and claims various alternative embodiments of an invention in a patent application. Often the application will include a generic claim along with claims directed to different species where the species recite characteristics that are mutually exclusive. According to the Manual of Patent Examining Practice (MPEP) Section 806.04(f) “[t]he general test as to when claims are restricted, respectively, to different species is the fact that one claim recites limitations which under the disclosure are found in a first species but not in a second, while a second claim recites limitations disclosed only for the second species and not the first. This is frequently expressed by saying that claims to be restricted to different species must recite the mutually exclusive characteristics of such species.”
The primary reason that the Examiner makes the election of species requirement is that if the broader, generic claim is not found to be free of the prior art, then the Examiner would have to search the prior art for each of the mutually exclusive characterisitics to properly dispose of the application. Searching for many limitations can be time-consuming, so limiting the Applicant to a single mutually exclusive characteristic upfront enables the Examiner to more effectively deal with the large volumes of applications on his or her docket.
As an example a hypothetical claimset that includes claims directed to species is presented below:
What is claimed is:
- A widget.
- The widget of claim 1 where the widget is transparent.
- The widget of claim 1 where the widget is opaque.
In this instance the application discloses the generic invention of a widget, which is represented in claim 1. Alternative embodiments of the widget would be a transparent widget and an opaque widget, which are represented in claims 2 and 3, respectively. These characteristics are mutually exclusive. In such a situation the Examiner could properly require an Applicant to elect a single species for examination (assuming of course that it would be unreasonable/burdensome for the Examiner to examine each of the disclosed and claimed species in the application and the Examiner makes this statement in the restriction requirement). The Examiner would require a species election between a transparent widget, claim 2, and an opaque widget, claim 3. To be fully responsive to the restriction requirement, the Applicant must elect one of the two, though an election can be made while also traversing the species requirement if the Applicant does not agree with the propriety of the requirement.
For the sake of example we will say the Applicant elects the transparent widget as found in claim 2. The Examiner will then examine the generic claim of the widget, claim 1, and the claims directed at the elected species that include the limitation of the widget being transparent; claim 2.
If the generic claim to the widget is found allowable (i.e. free of the prior art and nonobvious) then it follows ipso facto that the species claims (both species claims) are also free of the prior art. If a widget is novel, then it must be that both transparent widgets and opaque widgets are also novel. In this situation all three claims should be allowable, assuming no other issues exist such as issues relating “vagueness” under 35 USC 112, para. 2. Rejoinder of claims directed to non-elected species (i.e. opaque widgets) should be pursued.
On the other hand, if the generic claim is not found to be free of the prior art, the Examiner will then examine only the elected species, the transparent widget. If the species is found free of the prior art, then only claims containing all of the restrictions of the elected species, a widget that is transparent, will be allowed. Opaque widgets will not be examined. Patent protection for opaque widgets can be pursued in a divisional application.