How to Respond to an Election of Species Requirement. Episode 55

Election of Species vs. Restriction Requirements

In the last episode, I talked about restriction requirements. A restriction requirement occurs when the examiner believes that you have more than one invention in your application and requires you to select one for examination first. A similar type of requirement that often appears alongside it is called an election of species requirement.

An election of species requirement does not indicate that your application contains multiple inventions. Instead, the examiner is saying that you have too many variations of the same invention, making it too burdensome to review all the variations unless the broadest version of your invention is first allowed.

Understanding Election of Species: A Flashlight Example

Let’s say you were the first person to invent a flashlight. Your first claim might be:

"I claim a device having a bulb, a battery connected to the bulb, a housing for the batteries, and a switch to turn on the bulb."

This broad independent claim covers a general flashlight. Now, suppose you add dependent claims:

• Claim 2: "The flashlight of claim 1, wherein the housing is transparent."

• Claim 3: "The flashlight of claim 1, wherein the housing is opaque."

Here, you have two opposite claims—one covering a transparent flashlight and another covering an opaque one. This situation frequently triggers an election of species requirement.

Examiner’s Approach to an Election of Species Requirement

When you receive an election of species requirement, the examiner is saying:

"I will examine your broad claim, but if I do not allow it, I am not going to examine every minor variation of your invention."

According to the rules, the examiner must review a reasonable number of species if doing so is not overly burdensome. Typically, the examiner will analyze your figures. Suppose:

• Figures 1-5 depict a transparent flashlight.

• Figures 6-10 depict an opaque flashlight.

The examiner may determine that Figures 1-5 represent one species (Species I) and Figures 6-10 represent another species (Species II). The examiner will then issue a requirement stating that Figures 1-5 correspond to Claim 2 and Figures 6-10 correspond to Claim 3, requiring you to elect a species.

How to Respond to an Election of Species Requirement

You can argue against the requirement, but I advise caution because contesting it could have unintended consequences. For this introductory discussion, I recommend simply complying by answering "without traverse," meaning you are not contesting the election requirement.

The best strategy is to choose the version that is most commercially viable or has the best chance of being allowed. Suppose you believe the transparent flashlight is more patentable and marketable. Your response would be:

"Applicant elects Species I, which reads on Claim 2 and Figures 1-5."

How Election of Species Differs from a Restriction Requirement

One major difference between an election of species and a restriction requirement is that the examiner will still examine your broad claim, which does not specify transparency or opacity. If this broad claim is allowed, you will receive patent protection for all types of flashlight housings, as the claim is silent on the issue.

If your broad claim is allowed, your dependent claims will also be allowed without separate examination. In patent terms, once the generic claim is allowed, the species dependent on it should all be allowed.

However, if the examiner rejects your broad flashlight claim, they will then examine your elected species. If the examiner finds that your transparent flashlight (Claim 2) is patentable, you will receive a patent for that, but you will not have protection for an opaque flashlight (Claim 3).

Filing a Continuation Application

If you still want protection for the opaque flashlight, you can file another application—a continuation patent application—which I will discuss in a future episode.

Other Examples of an Election of Species Requirement

Election of species requirements frequently arise when multiple claims list different materials. Suppose you were the first person to patent a light bulb. Your first claim might be:

"I claim a device having a transparent shell and a filament capable of emitting light when an electric current passes through it."

Your dependent claims could include:

• Claim 2: "The device of claim 1, wherein the filament is tungsten."

• Claim 3: "The device of claim 1, wherein the filament is carbon."

• Claim 4: "The device of claim 1, wherein the filament is bamboo."

If your general claim is rejected, the examiner will need to conduct separate searches for each filament material. Instead of performing 50 different searches, the examiner may issue an election of species requirement, grouping filaments into categories (e.g., metal filaments and vegetative filaments) or treating each filament as a separate species.

Suppose you elect Claim 2 (the tungsten filament). The examiner reviews your claims and finds that:

1. The general light bulb claim is not novel.

2. Bamboo filament light bulbs already exist.

3. The tungsten filament is new and non-obvious.

You will receive a patent for the tungsten filament version only.

The Risk of Electing the Wrong Species

Suppose you had elected Claim 4 (bamboo filament). The examiner would examine your general claim, reject it, and then reject Claim 4 as not novel. You cannot go back and say, "Wait! I see that tungsten is actually the inventive feature—I want that examined instead." Because you elected Claim 4, you are stuck with that choice. However, you can file a new application with the tungsten filament claim, which will be examined separately.

Summary

A restriction requirement arises when the examiner finds multiple inventions in a single application and requires you to choose one. These typically involve different independent claims.

An election of species requirement occurs when your application contains multiple variations of the same invention. You must choose one or a few species (variations) to be examined if your broad claim is rejected.

In your response, you will:

1. Select the species you want the examiner to examine.

2. Indicate the corresponding claim numbers.

3. Specify the figures that go with those claims.

Final Thoughts

Restriction and election practice can be tricky, and there are multiple strategies for handling these requirements. Sometimes, species can be independent inventions, or they can be closely related. The examiner’s goal is to avoid excessive prior art searches for different inventions or versions of an invention and streamline the examination process. You can always file a new application later if you wish to seek protection for unelected species.

I’m Adam Diament, and until next time—keep on inventing!