How do examiners handle applications where common ownership or a joint research agreement has been established?
When common ownership or a joint research agreement has been established, examiners follow a specific procedure as outlined in MPEP 717.02(c):
- Examine the applications on all grounds, except the disclosure that is excepted as prior art under 35 U.S.C. 102(a)(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.
- 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).
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