818.02 Election Other Than Express [R-07.2015]
Election may be made in ways other than by explicitly or expressly identifying the elected invention or in reply to a requirement as set forth in MPEP § 818.02(a) and § 818.02(d).
818.02(a) Election By Originally Presented Claims [R-07.2015]
Where claims to another invention are properly added and entered in the application before the earlier of the mailing of a first restriction requirement or the mailing of a first Office action on the merits, those claims, along with the ones presented upon filing the application, will be considered originally presented claims for purposes of restriction only.
The claims originally presented and acted upon by the Office on their merits determine the invention elected by an applicant in the application, and in any request for continued examination (RCE) filed for the application. Subsequently presented claims to an invention other than that acted upon should be treated as provided in MPEP § 821.03.
For reissue practice, see MPEP Chapter 1400.
818.02(b) Generic Claims Only — No Election of Species; Linking Claims Only – No Election of Invention [R-07.2015]
Where only generic claims are first presented and prosecuted in an application in which no election of a single species of that genus has been required, and applicant later presents species claims to two or more independent or distinct species of the invention, the examiner may require applicant to elect a single species. The practice of requiring election of species in cases with only generic claims is discussed in MPEP § 808.01(a). Where only linking claims are first presented and prosecuted in an application in which no election of a single linked invention has been made, and applicant later presents claims to two or more linked, independent or distinct inventions, the examiner may require applicant to elect a single invention.
818.02(c) Election By Optional Cancellation of Claims [R-07.2015]
Where applicant claims two or more independent or distinct inventions and as a result of amendment to the claims, he or she cancels the claims to one or more of such inventions, leaving claims to one invention, and such claims are acted upon by the examiner, the claimed invention thus acted upon is elected.
818.02(d) Election By Cancellation of Claims, Lacking Express Election Statement [R-07.2015]
If applicant’s reply to a requirement for restriction does not expressly state the invention elected, but cancels claims to all but one of the inventions, the remaining invention will be deemed to be the elected invention.