What conditions must be met for the USPTO to reject a generic claim based on nonstatutory double patenting?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

According to MPEP 806.04(i), the USPTO may reject a generic claim on the grounds of nonstatutory double patenting when certain conditions are met. These conditions are:

1. The 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.
2. The patent and application have at least one common (joint) inventor.
3. The patent and application are either:
   • Commonly assigned/owned, or
   • 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).

These conditions ensure that the rejection is applied in cases where there is a significant relationship between the earlier patent and the later application, preventing potential abuse of the patent system.