What conditions must be met for the USPTO to reject a generic claim based on nonstatutory double patenting?
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:
- 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.
- The patent and application have at least one common (joint) inventor.
- 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.
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