“Election of Species” & How it Affects Your Patent

You may have seen that a first office action in a patent application is a restriction requirement or an election of species. In an election of species, the patent examiner insists that the patent application contains features or dependent claims to different, such as two or more, inventions. The rule is that a patent can be issued only for one invention. So if after the first office action, we limit the claims to one of the species, by bringing a dependent claim, the patent examiner will be forced to conduct a new search with changed search strategy. The election of species, therefore, can be considered a prophylactic amendment to prepare for the possibility that the claims will be further limited. After an election of species, there are two routes. The claims may be allowed with a generic claim, that is, the election was not necessary after all. Or, the claims will issue with a limited species. In that case, the non-elected species may be pursued in one or more divisional applications. If you have more questions, we suggest consulting with an experienced intellectual property attorney.