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[lacerda70]

Background:  A CIP application has been rejected on the grounds of non-statutory double patenting over the parent application.  The parent application has 3 inventors who have all assigned to corporation A.  The CIP has the same 3 inventors plus another inventor.  The 3 common inventors assigned to corporation A.  The fourth inventor assigned to corporation B.

Problem - we cannot file a terminal disclaimer b/c the applications are not commonly owned.  Is there any reason we cannot have corporation B file an assignment to corporation A and then file a terminal disclaimer?

Does it matter whether the fourth inventor had an obligation to assign to corporation A at the time the invention was made?  I know that this is a requirement under 103(c) (requiring common ownership at the time the later invention was made") but I don't see any similar requirement for filing a terminal disclaimer.

THanks!