How are voluntarily presented species claims in different applications evaluated for double patenting?
Voluntarily presented species claims in different applications require careful evaluation for potential double patenting issues. The MPEP states:
“Where, however, claims to a different species, or a species disclosed but not claimed in a parent case as filed and first acted upon by the examiner, are voluntarily presented in a different application having at least one common (joint) inventor or a common assignee (i.e., no requirement for election pertaining to said species was made by the Office) there should be close investigation to determine whether a double patenting rejection would be appropriate.”
This means that when an applicant voluntarily files a new application claiming species that were not subject to a restriction requirement in a parent application, examiners must carefully consider whether a double patenting rejection is warranted. This is particularly important when the applications share a common inventor or assignee. The MPEP directs examiners to MPEP § 804.01 and § 804.02 for guidance on making these determinations.
To learn more: