How does the USPTO handle double patenting issues with genus and species claims?
The USPTO has specific guidelines for handling double patenting issues related to genus and species claims. According to MPEP 806.04(i):
“If a generic claim is presented in a separate application after the issuance of a patent claiming one or more species within the scope of the generic claim, the Office may reject the generic claim on the grounds of nonstatutory double patenting when the patent and application have at least one common (joint) inventor and/or are either (1) commonly assigned/owned or (2) non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3).“
To overcome such a rejection, applicants may file a terminal disclaimer. This approach helps prevent improper extension of patent rights while still allowing for the protection of both genus and species inventions.
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