How do examiners handle applications where common ownership or a joint research agreement has been established?

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.

When common ownership or a joint research agreement has been established, examiners follow a specific procedure as outlined in MPEP 717.02(c):

1. Examine the applications on all grounds, except the disclosure that is excepted as prior art under 35 U.S.C. 102(a)(2).
2. Examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection if appropriate in view of the excepted subject matter disclosed in the reference.
3. Invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate (see 37 CFR 1.321).

The MPEP states: If the application being examined has established that the disclosure is excepted as prior art under 35 U.S.C. 102(b)(2)(C) the examiner will: (A) examine the applications as to all grounds, except the disclosure that is excepted as prior art under 35 U.S.C. 102(a)(2); (B) examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection, if appropriate in view of the excepted subject matter disclosed in the reference; and (C) invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate (see 37 CFR 1.321).