I wonder if anyone can answer this. What the US examiner says appears at first sight ambiguous, but there is perhaps a clue in the reference to 35 U.S.C. 121 (which I looked at).

The examiner says:

“This application contains claims directed to the following patentably distinct species: Species A and Species B”

For each species, there are several sub-species, say 1 and 2.

She goes on to say:

“Note: One subspecies must be chosen for each species for a full election. As a nonlimiting example, a full election would be: Species A, subspecies 1; Species B, subspecies 2."

This note suggests to me that we can elect both species, A and B, with one sub-species for each, for prosecution. However, she goes on to say:

“The species are independent or distinct because the different species have mutually exclusive characteristics for each identified species as indicated above. In addition, these species are not obvious variants of each other based on the current record.

Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.”

Which suggests to me that we have to elect one species, A or B, with one sub-species for the elected species, for prosecution.

My question is, must we elect one species only or can we elect both (each with one sub-species), and as a subsidiary question: what is a full election?

Thanks for any help you can give me.

1 Answer 1


You can't have coverage for two "inventions" in one patent. It gets around the fee structure the patent offices operate under. It sounds like they are trying to force you to create a divisional application. I would do a Google search of divisional patents to find strategies to get around this.

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