What happens if a generic claim is presented after a species claim has been issued in a patent?

If a generic claim is presented in a separate application after a patent has been issued 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. This can occur when:

• The patent and application have at least one common (joint) inventor
• The patent and application are commonly assigned/owned
• The patent and application are 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)

As stated in 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 learn more:

• generic claims
• species claims
• double patenting
• patent rejection