I recently received an Office Action from the USPTO containing the following sentence:

Upon allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written independent form or otherwise require all the limitations of an allowed generic claim.

What does this sentence mean in this context? How should I respond?

I have not been able to find any reliable sources on the internet to help me interpret it.

  • @Matthew Haugen: Thank you for editing my poor English...!
    – Miki
    Commented Apr 28, 2016 at 5:22

1 Answer 1


Please read http://www.uspto.gov/web/offices/pac/mpep/s809.html (scroll down to the section titled "Present")

Also look at http://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e324081 (go to Section 1.141 Different inventions in one national application)

I won't go into what is already on those pages, but essentially, the USPTO is saying that if you are patenting multiple species in a single application, you need to have one generic claim that applies to all of those species, and if that generic claim is granted, you can make additional claims. However, those additional claims must carry all the limitations of the generic claim.

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