Double Patenting Basics

Sometimes, a patent application presents newer claims that are similar to previous claims with a common inventor, common applicant, or common assignee or owner. 

If the newer claims are identical, then the newer claims are properly rejected under 35 USC 101 on the ground of statutory double patenting.  (Yes, there are many different types of rejections under 101.)  This problem most commonly arises when an applicant files a continuation application but delays filing a Preliminary Amendment.  If the Examiner examines the claims before the Preliminary Amendment is filed, then a statutory double patenting rejection is proper.

Examiners often prioritize examining continuation applications that present this situation.  This situation can be avoided by savvy Applicants.

Statutory double patenting rejections only can be overcome by amending the claims to be different from the parent claims: a Terminal Disclaimer will not overcome a statutory double patenting rejection.  MPEP 804.02 I.  Any difference in claim scope should be sufficient to escape a statutory double patenting rejection.

If the newer claims are not patentably distinct from the previous claims, then there is no statutory basis for rejecting the claims.  Instead, the claims are rejected under a judicially-created (i.e., non-statutory) doctrine of double patenting.  This is the most typical type of double patenting and is the type that can be overcome by Terminal Disclaimer.  We will examine this type of double patenting in a future blog post. 

Another type of double patenting exists, one based on equitable principles.  This type depends on the facts of the particular application and is discussed in detail in MPEP 804 II B 3.  These equitable principles were considered in In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986); and Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003). 

These equitable double patenting rejections can be overcome by filing a Terminal Disclaimer.  However, in many cases, it is possible to argue one’s way out of these rejections, rather than filing a Terminal Disclaimer.

Modal PLLC can develop a strategy for filing continuation applications and responding to equitable double patenting rejections.

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