MPEP Double Patenting Update

Office Actions sometimes include both a nonstatutory, obviousness-type double patenting rejection and an art rejection, such as an anticipation or obviousness rejection.  Applicants typically focus their amendment efforts on the art rejection, because that rejection must be overcome on the merits.  In contrast, the double patenting rejection can be overcome procedurally by filing a Terminal Disclaimer.

Accordingly, some Applicants previously asked Examiners to hold double patenting rejections in abeyance.  Examiners typically agreed.  The reason is that an amendment that overcomes the art might also overcome the double patenting rejection.  Filing an unnecessary Terminal Disclaimer is, after all, “an unhappy circumstance.”  In re Jentoft, 392 F.2d 633, 639, n. 6 (CCPA 1968).

However, in June 2020, the USPTO updated the MPEP to the Ninth Edition, Revision 10.2019.  Now, asking to hold a double patenting rejection in abeyance can be considered non-compliant.  MPEP 804 I B 1.

Of course, Applicants should meaningfully argue the double patenting rejection, if possible.  However, the facts of the case might not support a meaningful argument, particularly during the early prosecution of a continuation application.

Further, the USPTO concludes 35 USC 253 does not provide for conditional disclaimers that are contingent upon allowance of the claims.  MPEP 1490 VI.  Thus, over the next few weeks, this blog will consider the ramifications of this shift in USPTO guidelines.

So, for those readers that attended US Prosecution Study Group Session 13 on 25 November, it will still be a few weeks before we reach the Terminal Disclaimer issue in that case.  On the other hand, if any blog readers are interested in attending our free biweekly study group, in which we review appealed US prosecutions of Japan-origin cases, please email our patents@ email address to receive an invitation.

And, in the interim, Modal can assist in responding to any double patenting rejections.