What is nonstatutory double patenting in the context of generic and species claims?
Nonstatutory double patenting is a judicial doctrine that prevents the extension of patent rights beyond the statutory term through subsequent patent applications. In the context of generic and species claims, MPEP 806.04(i) states:
“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…”
This means that if an applicant tries to obtain a patent on a generic claim after already having a patent on a species within that generic claim, the USPTO may reject the generic claim to prevent an unjustified extension of patent rights. This rejection aims to prevent an inventor from effectively extending their monopoly by obtaining multiple patents on essentially the same invention.
To learn more: