804.02 Avoiding a Double Patenting Rejection
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I. STATUTORY
A rejection based on the statutory type of double patenting can be avoided by amending the conflicting claims so that they are not coextensive in scope.
- Where the conflicting claims are in one or more pending applications and a patent, a rejection based on statutory type double patenting can also be avoided by canceling the conflicting claims in all the pending applications.
- Where the conflicting claims are in two or more pending applications, a provisional rejection based on statutory type double patenting can also be avoided by canceling the conflicting claims in all but one of the pending applications.
- A terminal disclaimer is not effective in overcoming a statutory double patenting rejection.
- The use of a 37 CFR 1.131(a) affidavit in overcoming a statutory double patenting rejection is inappropriate.
II. NONSTATUTORY
A rejection based on a nonstatutory type of double patenting can be avoided by filing a terminal disclaimer in the application or proceeding in which the rejection is made.
The use of a 37 CFR 1.131(a) affidavit in overcoming a double patenting rejection is inappropriate because the claim or claims in the application are being rejected over a patent which claims the rejected invention.
III. TERMINAL DISCLAIMER REQUIRED DESPITE REQUEST TO ISSUE ON COMMON ISSUE DATE
Applicants are cautioned that reliance upon a common issue date cannot effectively substitute for the filing of one or more terminal disclaimers in order to overcome a proper nonstatutory double patenting rejection, particularly since a common issue date alone does not avoid the potential problems of dual ownership by a common assignee, or by parties to a joint research agreement, of patents to patentably indistinct inventions.
- In any event, the Office cannot ensure that two or more applications will have a common issue date.
IV. DISCLAIMING MULTIPLE DOUBLE PATENTING REFERENCES
If multiple conflicting patents and/or pending applications are applied in nonstatutory double patenting rejections made in a single application, then prior to issuance of that application, it is necessary to disclaim the terminal part of any patent granted on the application which would extend beyond the expiration date of each one of the conflicting patents and/or applications.
- A terminal disclaimer fee is required for each terminal disclaimer filed.
- To avoid paying multiple terminal disclaimer fees, a single terminal disclaimer based on common ownership may be filed, for example, in which the term disclaimed is based on all the conflicting, commonly owned nonstatutory double patenting references.
- Similarly, a single terminal disclaimer based on a joint research agreement may be filed, in which the term disclaimed is based on all the conflicting nonstatutory double patenting references.
Filing a terminal disclaimer including each one of the conflicting nonstatutory double patenting references is also necessary to avoid the problem of separate enforcement of patents to patentably indistinct inventions by parties to a joint research agreement.
V. REQUIREMENTS OF A TERMINAL DISCLAIMER
A terminal disclaimer is a statement filed by an owner (in whole or in part) of a patent or a patent to be granted that is used to disclaim or dedicate a portion of the entire term of all the claims of a patent.
VI. TERMINAL DISCLAIMERS REQUIRED TO OVERCOME NONSTATUTORY DOUBLE PATENTING REJECTIONS IN APPLICATIONS FILED ON OR AFTER JUNE 8, 1995
Any patent issuing on a utility or plant application filed on or after June 8, 1995 will expire 20 years from its filing date, or, if the application claims the benefit of an earlier filed application under 35 U.S.C. 120, 121, 365(c), or 386(c), 20 years from the earliest filing date for which a benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) is claimed.
- Therefore, any patent issuing on a continuing utility or plant application filed on or after June 8, 1995 will expire 20 years from the earliest filing date for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c), subject to the provisions of 35 U.S.C. 154(b) and 156 (providing for certain patent term adjustments and extensions).
- Thus, situations will often arise in which two copending applications subject to a provisional double patenting rejection will have the same effective filing date, and thus, potentially will have the same patent term.
If a terminal disclaimer is filed in an application in which the claims are then canceled or otherwise shown to be patentably distinct from the reference claims, the terminal disclaimer may be withdrawn before issuance of the patent by filing a petition under 37 CFR 1.182 requesting withdrawal of the recorded terminal disclaimer. A terminal disclaimer may not be withdrawn after issuance of the patent.
