1504.06 Double Patenting
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There are generally two types of double patenting rejections.
- One is the “same invention” type or statutory double patenting rejection based on 35 U.S.C. 171 which states in the singular that an inventor “may obtain a patent.”
- The second is the “nonstatutory-type” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent.
The submission of a terminal disclaimer to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group.
It is important to note that the “obviousness” analysis for “obviousness-type” double-patenting is “similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103.”
Double patenting rejections are based on a comparison of the claims in a patent and an application or between two applications which have at least one common inventor, common applicant, and/or are commonly assigned/owned or non-commonly assigned/owned but subject to a joint research agreement.
- 35 U.S.C. 171 specifically states that “a patent” may be obtained if certain conditions are met; this use of the singular makes it clear that only one patent may issue for a design and is the basis for the statutory double patenting rejections.
A provisional double patenting rejection will be converted into a double patenting rejection when the first application, which is the basis for the rejection, publishes as an application publication or issues as a patent.
I. “SAME INVENTION” DOUBLE PATENTING REJECTIONS
A design - design statutory double patenting rejection based on 35 U.S.C. 171 prevents the issuance of a second patent for a design already patented.
- For this type of double patenting rejection to be proper, identical designs with identical scope must be twice claimed.
A design - utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims.
- The “same invention” type of double patenting rejection, whether statutory or nonstatutory, cannot be overcome by a terminal disclaimer.
II. NONSTATUTORY DOUBLE PATENTING REJECTIONS
A rejection based on nonstatutory double patenting is based on a judicially created doctrine grounded in public policy so as to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent.
A nonstatutory double patenting rejection applies to claims directed to the same inventive concept with different appearances or differing scope which are patentably indistinct from each other.
- Nonstatutory categories of double patenting rejections which are not the “same invention” type may be overcome by the submission of a terminal disclaimer.
In determining whether to make a nonstatutory double patenting rejection between designs having differing scope, the examiner should compare the reference claim with the application claim. A rejection is appropriate if:
- (A) The difference in scope is minor and patentably indistinct between the claims being compared;
- (B) Patent protection for the design, fully disclosed in and covered by the claim of the reference, would be extended by the allowance of the claim in the later filed application; and
- (C) No terminal disclaimer has been filed.
A nonstatutory double patenting rejection may be made between a patent and an application or provisionally between applications.
- Such rejection over a patent may only be necessary if the patent issued less than a year before the filing date of the application.
Examiners should particularly note that a design-design nonstatutory double patenting rejection does not always have to be made in both of the conflicting applications.
» 1504.10 Priority Under 35 U.S.C. 119(a)-(d),386(a) and (b)
