[Patentpractice] Species restriction

Tue Jun 10 16:52:26 UTC 2025

Oh, and sometimes, I will amend the claims to structure them in a way that avoids certain issues and then I set forth my own “modified” restriction and species requirement and make selections based on my modified requirement :)

If the “modified” requirement isn’t unreasonable, i.e., ‘fair’, I’ve found most examiners will go along with it.  If not, the examiner will call to address.  I think I once received a non-compliant notice once a blue moon ago when I did my own ‘modified’ requirement.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
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Washington, DC 20007
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From: Suzannah K. Sundby
Sent: Tuesday, June 10, 2025 12:46 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Patent Lawyer <patentlawyer995 at gmail.com>
Subject: RE: [Patentpractice] Species restriction

We get these all the time in biotech/pharma.

The species election just says that claims 1 and 2 read on the invention.  Right?

  *   Be careful how you specify which claims are generic and which read on the selected species.  If the species are not mutually exclusive, e.g., the system can have P1 and P2 at the same time, then you want to make sure to include the claims that specifically relate to P2 as being generic… and maybe even indicate that claim 2 is generic and reads thereon (depending on your specific claims/situation).

We leave claim 2 as it is.  Right?

  *   Yes

I.e., after electing P1, we leave claim 2 as is, and it will be examined only to the extent it covers the elected property P1.  Is that correct?

  *   Yes, if P1 is free of the art, then the Examiner searches another species.  Thus, you may want to specify the order of the species that you would like the Examiner to search next.  I often do this and usually the Examiner will be nice and search in the order of preference I indicate.

Assuming the disclosure is enabling for each of the properties (P1 … P4), is there a suggested strategy for which one to elect?

  *   I advise applicants to pick/decide based on the following (order of preference/importance): 1) the preferred species that is likely to be the commercial embodiment and/or 2) the species that is specifically exemplified in the detailed examples (bc if one runs into a written description or enablement rejection and can’t point to specific support/detailed examples… one will have significant challenges)… then 3) the species that the applicant is quite sure will be free of the art.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Patent Lawyer via Patentpractice
Sent: Tuesday, June 10, 2025 12:28 PM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Patent Lawyer <patentlawyer995 at gmail.com<mailto:patentlawyer995 at gmail.com>>
Subject: Re: [Patentpractice] Species restriction

So, if you have claims like:

Claim 1 recites "measuring one or more physical properties of a blob...", and
Claim 2 recites "the system of claim 1, wherein physical properties comprise P1, P2, P3, and P4."

The species restriction is on the properties P1, P2, P3, and P4 in claim 2.  The examiner says to pick one of them.
And we elect property P1.

The species election just says that claims 1 and 2 read on the invention.  Right?

We leave claim 2 as it is.  Right?

I.e., after electing P1, we leave claim 2 as is, and it will be examined only to the extent it covers the elected property P1.  Is that correct?

Assuming the disclosure is enabling for each of the properties (P1 … P4), is there a suggested strategy for which one to elect?

(I understand about traversing, but I am trying to be sure about what to do with the claims)

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Tuesday, June 10, 2025 at 10:06 AM
To: David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>, Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Richard Straussman <rstraussman at weitzmanip.com<mailto:rstraussman at weitzmanip.com>>
Subject: Re: [Patentpractice] Species restriction

Thanks!
Richard Straussman
Senior Counsel
Registered Patent Attorney
Member NY, NJ & CT Bars
. . . . . . . . . . . . . .
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Intellectual Property Law
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direct line 973.403.9943
main 973.403.9940
fax 973.403.9944
e-mail rstraussman at weitzmanip.com<mailto:rstraussman at weitzmanip.com>

http://www.weitzmanip.com<http://www.weitzmanip.com/>

On 6/10/2025 10:01 AM, David Boundy wrote:
Yes, theoretically this is proper use of election of species (EoS is common for Markush groups, for instance).

The main constraint is "mutually exclusive."  So to change your hypo slightly, "wherein the writing instrument produces a black line or has a six-sided barrel" wouldn't be electable because those two aren't mutually exclusive.

On Tue, Jun 10, 2025 at 9:39 AM Richard Straussman via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
All,

    Looking for some guidance.  Is it proper for an examiner to issue a species restriction where all of the supposedly different species are present in the same dependent claim (as opposed to separate dependent claims)?

    For example, if claim 1 recites a "writing implement" and claim 2 says, "the system of claim 1, wherein the writing implement is one of a pencil or a ball point pen"?    I am used to the type of species restriction issued involving , for example, claim 2 stating "the system of claim 1, wherein the writing implement is a pencil" and claim 3 stating "the system of claim 1, wherein the writing implement is a ball point pen."

    NOTE:  I am not concerned with the propriety of such restrictions or the arguments that can be made against them (thank you David for your repeated guidance to the group on those points), only the specific situation where the supposed different species are all recited in the same claim.

    Thanks in advance!

        Rich
--
Richard Straussman
Senior Counsel
Registered Patent Attorney
Member NY, NJ & CT Bars
. . . . . . . . . . . . . .
Weitzman Law Offices, LLC
Intellectual Property Law
425 Eagle Rock Avenue, Suite 401
Roseland, NJ 07068
direct line 973.403.9943
main 973.403.9940
fax 973.403.9944
e-mail rstraussman at weitzmanip.com<mailto:rstraussman at weitzmanip.com>

http://www.weitzmanip.com<http://www.weitzmanip.com/>

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