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804 Definition of Double Patenting

MPEP SECTION SUMMARY This section provides specific details on double patenting. Essentially, double patenting seeks to prevent the unjustified extension of patent rights beyond the term of a patent. This section covers when double patenting is possible along with the requirements of double patenting rejections. Obviousness type nonstatutory double patenting is also discussed including two-way obviousness. This section also discusses disclaimers which may be used to disclaim or dedicate part of a patent term. The topics discussed include terms, terminal disclaimers, statutory double patenting rejections, and nonstatutory rejections.

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Double patenting results when the right to exclude granted by a first patent is unjustly extended by the grant of a later issued patent or patents.

Before consideration can be given to the issue of double patenting, two or more patents or applications must have at least one common inventor, common applicant, and/or be 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 in pre-AIA 35 U.S.C. 103(c)(2) and (3).

• For purposes of a double patenting analysis, the application or patent and the subject matter disqualified under 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) will be treated as if commonly owned.
• Since the doctrine of double patenting seeks to avoid unjustly extending patent rights at the expense of the public, the focus of any double patenting analysis necessarily is on the claims in the multiple patents or patent applications involved in the analysis.

There are generally two types of double patenting rejections.

• One is the “same invention” type double patenting rejection based on 35 U.S.C. 101 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 doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention.

Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of “obviousness,” or a two-way determination of “obviousness.”

• 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.”

I. INSTANCES WHERE DOUBLE PATENTING ISSUE CAN BE RAISED

A double patenting issue may arise between two or more pending applications, or between one or more pending applications and a patent.

• A double patenting issue may likewise arise in a reexamination proceeding between the patent claims being reexamined and the claims of one or more applications and/or patents.
• Double patenting does not relate to international applications which have not yet entered the national stage in the United States.

A. Between Issued Patent and One or More Applications

Double patenting may exist between an issued patent and an application filed by the same inventive entity, a different inventive entity having a common inventor, a common applicant, and/or a common owner/assignee.

B. Between Copending Applications—Provisional Rejections

Occasionally, the examiner becomes aware of two copending applications that were filed by the same inventive entity, a different inventive entities having a common inventor, a common applicant, and/or a common owner/assignee, or that claim an invention resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3), that would raise an issue of double patenting if one of the applications became a patent.

• Where this issue can be addressed without violating the confidential status of applications, the courts have sanctioned the practice of making applicant aware of the potential double patenting problem if one of the applications became a patent by permitting the examiner to make a “provisional” rejection on the ground of double patenting.

1. Provisional Nonstatutory Double Patenting Rejections

A complete response to a nonstatutory double patenting rejection (also called an “obviousness-type” or ODP rejection) is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in the pending application(s) with a reply to the Office action.

• Such a response is required even when the nonstatutory double patenting rejection is provisional.
  

Where there are two applications with conflicting claims, a terminal disclaimer need not be filed in the application with the earliest effective U.S. filing date, i.e., the "earlier-filed application," which is identified as follows:

• (A) Where there is no benefit claim in the two applications, the earlier-filed application is the one having the earlier actual filing date;
  
• (B)
  
  • (1) Where at least one of the two applications is entitled to the benefit of a U.S. nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the earlier-filed application is the one having the earliest date to which it is entitled benefit under 35 U.S.C. 120, 121, 365(c), and/or 386(c).
    
  • (2) Where two applications are entitled to the benefit of the same U.S. nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), if all the conflicting claims of one of the applications are not appropriately supported in the parent application (and therefore, not entitled to the benefit of the filing date of the parent application), while the conflicting claims of the other application are appropriately supported in the parent application (and therefore, entitled to the benefit of the filing date of the parent application), then the other application is the earlier-filed application. If none of the conflicting claims of either application are appropriately supported in the parent application, then the actual filing dates of the two applications govern.
    
  • (C) A 35 U.S.C. 119(e) benefit claim is NOT taken into account in determining which is the earlier-filed application.
    
  • (D) A foreign priority claim under 35 U.S.C. 119(a) is NOT taken into account in determining which is the earlier-filed application.
    
    

2. Provisional Statutory Double Patenting Rejections (35 U.S.C. 101)

A terminal disclaimer cannot be filed to obviate a statutory double patenting rejection.

A statutory double patenting rejection can be overcome by canceling or amending the conflicting claims so they are no longer coextensive in scope.

A complete response to a statutory double patenting rejection is either a reply by applicant showing that the claims subject to the rejection are not the same as the reference claims or by amending or canceling the conflicting claims.

• Such a response is required even when the statutory double patenting rejection is provisional.
  
  

C. Between One or More Applications and a Published Application - Provisional Rejections

Double patenting may exist where a published patent application and an application are filed by the same inventive entity, different inventive entities having a common inventor, a common applicant, and/or a common owner/assignee.

• Double patenting may also exist where a published application and an application claim inventions resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3).
• If the published application has not yet issued as a patent, the examiner is permitted to make a “provisional” rejection on the ground of double patenting when the published application has not been abandoned and claims pending therein conflict with claims of the application being examined.

D. Reexamination Proceedings

A double patenting issue may raise a substantial new question of patentability of a claim of a patent, and thus can be addressed in a reexamination proceeding.


II. REQUIREMENTS OF A DOUBLE PATENTING REJECTION (INCLUDING PROVISIONAL REJECTIONS)

When a double patenting rejection is appropriate, it must be based either on statutory grounds or nonstatutory grounds.

The ground of rejection employed depends upon the relationship of the inventions being claimed.

Generally, a double patenting rejection is not permitted where the claimed subject matter is presented in a divisional application as a result of a restriction requirement made in a parent application under 35 U.S.C. 121.

A. Statutory Double Patenting — 35 U.S.C. 101

In determining whether a statutory basis for a double patenting rejection exists, the question to be asked is:

• Is the same invention being claimed twice?
• 35 U.S.C. 101 prevents two patents from issuing on the same invention.
• “Same invention” means identical subject matter.
  

If the “same invention” is not being claimed twice, an analysis must be made to determine whether a nonstatutory basis for double patenting exists.

B. Nonstatutory Double Patenting

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 double patenting rejection also serves public policy interests by preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention.

A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s).

1. Anticipation Analysis

A nonstatutory double patenting rejection is appropriate where a claim in an application under examination claims subject matter that is different, but not patentably distinct, from the subject matter claimed in a prior patent or a copending application.

• The claim under examination is not patentably distinct from the reference claim(s) if the claim under examination is anticipated by the reference claim(s).
  
  

2.Obviousness Analysis

A nonstatutory double patenting rejection, if not based on an anticipation rationale or an “unjustified timewise extension” rationale, is “analogous to [a failure to meet] the nonobviousness requirement of 35 U.S.C. 103” except that the patent disclosure principally underlying the double patenting rejection is not considered prior art.

In view of the similarities, the factual inquiries set forth in Graham v. John Deere Co. that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 should typically be considered when making a nonstatutory double patenting analysis based on “obviousness.”

These factual inquiries are summarized as follows:

• (A) Determine the scope and content of a patent claim relative to a claim in the application at issue;
  
• (B) Determine the differences between the scope and content of the patent claim as determined in (A) and the claim in the application at issue;
  
• (C) Determine the level of ordinary skill in the pertinent art; and
  
• (D) Evaluate any objective indicia of nonobviousness.

Any nonstatutory double patenting rejection made under the obviousness analysis should make clear:

• (A) The differences between the inventions defined by the conflicting claims — a claim in the patent compared to a claim in the application; and
  
• (B) The reasons why a person of ordinary skill in the art would conclude that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent.

  (a) Construing the Claim Using the Reference Patent or Application Disclosure

When considering whether the invention defined in a claim of an application would have been an obvious variation of the invention defined in the claim of a patent or copending application, the disclosure of the patent may not be used as prior art.

• This does not mean that one is precluded from all use of the reference patent or application disclosure.

The specification can be used as a dictionary to learn the meaning of a term in the claim.

In analyzing the disclosure of the reference patent or application, a determination is made as to whether a portion of the disclosure is directed to subject matter that is encompassed by the scope of a reference claim.

• For example, assume that the claim in a reference patent is directed to a genus of compounds, and the application being examined is directed to a species within the reference patent genus.

Each nonstatutory double patenting situation must be decided on its own facts.

(b) One-Way Test for Distinctness

If the application under examination is the later-filed application, or both applications are filed on the same day, only a one-way determination of distinctness is needed in resolving the issue of double patenting, i.e., whether the invention claimed in the application would have been anticipated by, or an obvious variation of, the invention claimed in the patent.

• If a claimed invention in the application would have been obvious over a claimed invention in the patent, there would be an unjustified timewise extension of the patent and a nonstatutory double patenting rejection is proper.

Similarly, even if the application under examination is the earlier-filed application, only a one-way determination of distinctness is needed to support a double patenting rejection in the absence of a finding:

• (A) that "the PTO is solely responsible for any delays" in prosecution of the earlier-filed application and
• (B) that the applicant could not have filed the conflicting claims in a single (i.e., the earlier-filed) application.
  

A timely filed terminal disclaimer may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.

(c) Two-Way Test for Distinctness

If the patent is the later-filed application, the question of whether the timewise extension of the right to exclude granted by a patent is justified or unjustified must be addressed.

• A two-way test is to be applied only when the applicant could not have filed the claims in a single application and the Office is solely responsible for any delays.
  

When making a two-way distinctness determination, where appropriate, it is necessary to apply the obviousness analysis twice, first analyzing the obviousness of the application claims in view of the patent claims, and then analyzing the obviousness of the patent claims in view of the application claims.

• Where a two-way distinctness determination is required, a nonstatutory double patenting rejection based on obviousness is appropriate only where each analysis leads to a conclusion that the claimed invention is an obvious variation of the invention claimed in the other application/patent.
• If either analysis does not lead to a conclusion of obviousness, no double patenting rejection of the obviousness-type is made, but this does not necessarily preclude a nonstatutory double patenting rejection based on equitable principles.

3. Nonstatutory Double Patenting Rejection Based on Equitable Principles

In some circumstances a nonstatutory double patenting rejection is applicable based on equitable principles.

• Occasionally the fundamental reason for nonstatutory double patenting – to prevent unjustified timewise extension of patent rights – is itself enforceable no matter how the extension is brought about.
  
  

4. Design/Plant — Utility Situations

Double patenting issues may be raised where an applicant has filed both a utility patent application and either an application for a plant patent or an application for a design patent.

• In general, the same double patenting principles and criteria that are applied in utility-utility situations are applied to utility-plant or utility-design situations.
• Double patenting rejections in utility-plant situations may be made in appropriate circumstances.
  
  

III. CONTRAST BETWEEN DOUBLE PATENTING REJECTION AND REJECTIONS BASED ON PRIOR ART

Rejections over a patent or another copending application based on double patenting or under 35 U.S.C. 102 or 103 are similar in the sense that both require comparison of the claimed subject matter with at least part of the content of another patent or application, and both may require that an anticipation or obviousness analysis be made.

• One significant difference is that a double patenting rejection must rely on a comparison with the claims in an issued patent or pending application, whereas an anticipation or obviousness rejection based on the same patent or application under 35 U.S.C. 102 or 103 relies on a comparison with what is disclosed (whether or not claimed) in the same issued patent or pending application.
• A second significant difference is that a terminal disclaimer cannot be used to obviate a rejection based on prior art under 35 U.S.C. 102 or 103 prior art, even though it may overcome a nonstatutory double patenting rejection.
• The purpose of a terminal disclaimer is to obviate a nonstatutory double patenting rejection by removing the potential harm to the public by issuing a second patent, and not to remove a patent as prior art.

IV. DOUBLE PATENTING REJECTIONS AND PRIOR ART EXCLUSION UNDER PRE-AIA 35 U.S.C. 103(c)

For pre-AIA applications filed on or after November 29, 1999 and for pre-AIA applications pending on or after December 10, 2004, a commonly assigned/owned patent or application may be disqualified as pre-AIA 35 U.S.C. 102(e) prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

For pre-AIA applications pending on or after December 10, 2004, a patent or application may be disqualified as pre-AIA 35 U.S.C. 102(e) prior art in a pre-AIA 35 U.S.C. 103(a) rejection if evidence of a joint research agreement pursuant to pre-AIA 35 U.S.C. 103(c)(2) and (3) is made of record in the application (or patent) being examined (or reexamined), and the conflicting claims resulted from a joint research agreement that was in effect on or before the date the later claimed invention was made.

• The prior art exclusion under pre-AIA 35 U.S.C. 103(c) may also be applicable in post-grant Office proceedings if the application, which matured into the patent under reexamination or review, meets the above-mentioned conditions.

An examiner should make both a pre-AIA 35 U.S.C. 102(e)/103(a) rejection and a double patenting rejection over the same reference when the facts support both rejections.

As an alternative to invoking the prior art exclusion under pre-AIA 35 U.S.C. 103(c)(1), the assignee could have taken some preemptive measures to avoid having a commonly assigned/owned copending application become prior art under pre-AIA 35 U.S.C. 102(e).

• The applications could have been filed on the same day, or copending applications could have been merged into a single continuation-in-part application and the parent applications abandoned.

V. DOUBLE PATENTING REJECTIONS AND PRIOR ART EXCEPTION UNDER 35 U.S.C. 102(b)(2)(C) and 102(c)

For AIA applications, a commonly assigned/owned patent or application may be excepted as prior art under 35 U.S.C. 102(a)(2).

• Also, if the requirements of 35 U.S.C. 102(c) are met, common ownership can be established by a joint research agreement.
• This prior art exception also applies in post-grant Office proceedings of patents if the patent under reexamination or review is subject to AIA 35 U.S.C. 102 and 103.

VI. DOUBLE PATENTING REJECTIONS ONCE A JOINT RESEARCH AGREEMENT IS ESTABLISHED

Under both pre-AIA and AIA law, until applicant establishes the existence of a joint research agreement, the examiner cannot apply a double patenting rejection based upon a reference that was made by or on behalf of parties to the joint research agreement.

• If in reply to an Office action applying a prior art rejection, applicant disqualifies the relied upon reference as prior art under the joint research agreement provision of 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c) and a subsequent nonstatutory double patenting rejection based upon the disqualified reference is applied, the next Office action may be made final even if applicant did not amend the claims (provided the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee.
• The Office action is properly made final because the new nonstatutory double patenting rejection was necessitated by the applicant’s amendment of the application.
  

 

» 804.01 Prohibition of Nonstatutory Double Patenting Rejections Under 35 U.S.C. 121