MPEP § 806.04(i) — Generic Claims Presented In a Separate Application After Issuance of Species Claims (Annotated Rules)
§806.04(i) Generic Claims Presented In a Separate Application After Issuance of Species Claims
This page consolidates and annotates all enforceable requirements under MPEP § 806.04(i), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Generic Claims Presented In a Separate Application After Issuance of Species Claims
This section addresses Generic Claims Presented In a Separate Application After Issuance of Species Claims. Primary authority: 35 U.S.C. 102(c) and 35 U.S.C. 103(c)(2). Contains: 2 permissions and 1 other statement.
Key Rules
Assignee as Applicant Signature
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). See MPEP § 804. Applicant may overcome such a rejection by filing a terminal disclaimer. See In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993); In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).
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). See MPEP § 804. Applicant may overcome such a rejection by filing a terminal disclaimer. See In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993); In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).
Joint Research Agreements (MPEP 2156)
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). See MPEP § 804. Applicant may overcome such a rejection by filing a terminal disclaimer. See In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993); In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).
Citations
| Primary topic | Citation |
|---|---|
| Assignee as Applicant Signature Joint Research Agreements (MPEP 2156) | 35 U.S.C. § 102(c) |
| Assignee as Applicant Signature Joint Research Agreements (MPEP 2156) | 35 U.S.C. § 103(c)(2) |
| Assignee as Applicant Signature Joint Research Agreements (MPEP 2156) | MPEP § 804 |
| Assignee as Applicant Signature Joint Research Agreements (MPEP 2156) | In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967) |
| Assignee as Applicant Signature Joint Research Agreements (MPEP 2156) | In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 806.04(i) — Generic Claims Presented In a Separate Application After Issuance of Species Claims
Source: USPTO806.04(i) Generic Claims Presented In a Separate Application After Issuance of Species Claims [R-07.2022]
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). See MPEP § 804. Applicant may overcome such a rejection by filing a terminal disclaimer. See In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993);In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).