What is a species restriction?
A species restriction differs from the more commonly known Restriction Requirement which arises when an Examiner feels that a patent application has multiple inventions. In a species restriction, the applicant is required to make an “election of species” according to patentably distinct species carved out by the Examiner.
Species restrictions may typically arise in situations where multiple embodiments are disclosed in a patent application. For example, suppose you filed a utility patent application for a system that has two main components: Part A and Part B. In the drawings and detailed description, your patent application discloses that Part A may have a number of variations. It is possible that the Examiner may issue a Species Restriction compelling you to pick one of the variations of Part A.
How does a species restriction differ from a Restriction Requirement?
A Restriction Requirement would generally divide the claim sets into distinct inventions. For example, Group I would comprise a first claim set while Group II would comprise a second claim set starting with a second independent claim.
In a species restriction, however, it is possible to have multiple species fall under a single genus. In other words, you may have at least one generic claim that links two or more species.
What is a linking claim?
A linking claim is typically an independent claim that covers both the elected species and non-elected species. What makes the claim linking is the breadth of the claim language that would cover both elected and non-elected species. Sometimes it is the silence or lack of detail in the claim that makes it generic.
The goal is to get one or more independent claims allowed with language broad enough to straddle both elected and non-elected species. That way, you might end up with more coverage than merely the elected species. Keep in mind you always have the option to file a continuation application prior to grant.
What happens if a generic claim is allowed?
If and when a generic claim is allowed, then the Examiner is required to rejoin and examine the non-elected species until there is a rejection or all the species covered by the linking claim are allowed.
Electing species with or without traverse
An election in response to a species restriction may be made “with traverse” meaning that the applicant may object to the requirement. The traversal may include reasons why the applicant thinks the restriction is improper or a request that the Examiner confirms that the delineated species are indeed patentably distinct. Keep in mind that an election must still be made in the event the traversal is unsuccessful so that the Examiner may start examination.
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