Definition of Double Patenting
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USPTO MPEP › Chapter 0800 - Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting › MPEP § 804
Text
35 U.S.C. 101
Inventions Patentable.
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 121
Divisional Applications.
[
Editor Note:
Applicable to any patent application filed on or after September 16, 2012. See
pre-AIA 35
U.S.C. 121
for the law otherwise applicable.
]
If two or more independent and distinct inventions are
claimed in one application, the Director may require the application to be restricted to
one of the inventions. If the other invention is made the subject of a divisional
application which complies with the requirements of
section 120
it
shall be entitled to the benefit of the filing date of the original application. A
patent issuing on an application with respect to which a requirement for restriction
under this section has been made, or on an application filed as a result of such a
requirement, shall not be used as a reference either in the Patent and Trademark Office
or in the courts against a divisional application or against the original application or
any patent issued on either of them, if the divisional application is filed before the
issuance of the patent on the other application. The validity of a patent shall not be
questioned for failure of the Director to require the application to be restricted to
one invention.
pre-AIA 35 U.S.C. 121
Divisional Applications.
[
Editor Note:
Not applicable
to any
patent application filed on or after September 16, 2012. See
35 U.S.C.
121
for the law otherwise applicable.
]
If two or more independent and distinct inventions are claimed in one
application, the Director may require the application to be restricted to one of the
inventions. If the other invention is made the subject of a divisional application which
complies with the requirements of
section 120
of this title it shall
be entitled to the benefit of the filing date of the original application
applicable.
]
If two or more independent and distinct inventions are claimed in one
application, the Director may require the application to be restricted to one of the
inventions. If the other invention is made the subject of a divisional application which
complies with the requirements of
section 120
of this title it shall
be entitled to the benefit of the filing date of the original application. A patent
issuing on an application with respect to which a requirement for restriction under this
section has been made, or on an application filed as a result of such a requirement,
shall not be used as a reference either in the Patent and Trademark Office or in the
courts against a divisional application or against the original application or any
patent issued on either of them, if the divisional application is filed before the
issuance of the patent on the other application. If a divisional application is directed
solely to subject matter described and claimed in the original application as filed, the
Director may dispense with signing and execution by the inventor. The validity of a
patent shall not be questioned for failure of the Director to require the application to
be restricted to one invention.
The doctrine of double patenting seeks to prevent the unjustified extension
of patent exclusivity beyond the term of a patent. The public policy behind this doctrine
is that:
The public should . . . be able to act on the assumption that upon the
expiration of the patent it will be free to use not only the invention claimed in the
patent but also modifications or variants which would have been obvious to those of
ordinary skill in the art at the time the invention was made, taking into account the
skill in the art and prior art other than the invention claimed in the issued patent.
In re Zickendraht,
319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963) (Rich,
J., concurring). Double patenting results when the right to exclude granted in one patent
is unjustly extended by the grant of another patent or patents
of
ordinary skill in the art at the time the invention was made, taking into account the
skill in the art and prior art other than the invention claimed in the issued patent.
In re Zickendraht,
319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963) (Rich,
J., concurring). Double patenting results when the right to exclude granted in one patent
is unjustly extended by the grant of another patent or patents.
In re Van
Ornum,
686 F.2d 937, 943-44, 214 USPQ 761, 766-67 (CCPA 1982).
Some commonality of inventorship or (deemed) ownership must exist between
two or more patents or applications before consideration can be given to the issue of
double patenting. For example, the patents or applications may have the same inventive
entity. The patents or applications may also have at least one common (joint) inventor,
which covers the situations where at least one patent or application names a sole inventor
and the other patent(s) or application(s) names joint inventors and where all the patents
or applications name joint inventors. For example, if one application names inventor A and
the second application names joint inventors A and B, then the applications have one common
(joint) inventor. As another example, if one application names joint inventors A and B and
a second application names joint inventors A, B, and C, then the applications have two
common joint inventors, and thus, have at least one common joint inventor. See
35 U.S.C.
100(f)
for definition of “inventor” and
35 U.S.C.
100(g)
for definition of “joint inventor”. Alternatively, the patents
or applications may have a 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)
. To
determine if subject matter excepted as prior art under
35 U.S.C.
102(b)(2)(C)
or disqualified as prior art under
pre-AIA 35 U.S.C.
103(c)
may be considered for double patenting issues, see
MPEP §
804.03
plicant, 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)
. To
determine if subject matter excepted as prior art under
35 U.S.C.
102(b)(2)(C)
or disqualified as prior art under
pre-AIA 35 U.S.C.
103(c)
may be considered for double patenting issues, see
MPEP §
804.03
.
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. 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.
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.
In re Van Ornum,
686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA
1982) (citing Chisum,
Patents
, § 9.04(2)(b) (1981) ). A terminal
disclaimer, submitted in compliance with
37 CFR 1.321(c) or (d)
to overcome a
double patenting rejection, includes a provision that the patent or any patent issuing from
the application is only enforceable for and during such period that it is owned by the same
party (or parties) that owns the other patents or applications, identified in the terminal
disclaimer, that claim obvious variations of one invention
submitted in compliance with
37 CFR 1.321(c) or (d)
to overcome a
double patenting rejection, includes a provision that the patent or any patent issuing from
the application is only enforceable for and during such period that it is owned by the same
party (or parties) that owns the other patents or applications, identified in the terminal
disclaimer, that claim obvious variations of one invention.
Van Ornum,
686 F.2d at 944-45, 214 USPQ at 767 (citing Chisum,
Patents
, §
9.04(2)(b) (1981)).
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
.”
In re Braat,
937 F.2d 589,
592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing
In re Longi,
759
F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985));
Geneva
Pharmaceuticals,
349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed. Cir.
2003). In addition, nonstatutory double patenting also includes rejections based on the
equitable principle against permitting an unjustified timewise extension of patent rights.
See
In re Schneller,
397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also
subsection II.B.6, below.
The charts below are an overview of the treatment of applications having
conflicting claims (e.g., where a claim in an application is not patentably distinct from a
claim in a patent or another application). Note that although double patenting and
unpatentability over prior art are two separate issues (for example, a double patenting
reference that contains conflicting claims need not qualify as prior art), the charts speak
to both issues when the reference is a patent or application for completeness
a claim in an application is not patentably distinct from a
claim in a patent or another application). Note that although double patenting and
unpatentability over prior art are two separate issues (for example, a double patenting
reference that contains conflicting claims need not qualify as prior art), the charts speak
to both issues when the reference is a patent or application for completeness.
Specifically, the charts cover when two applications have claims to the same invention
(Charts I-A) or to patentably indistinct inventions (Charts I-B) and when an application
and a patent have claims to the same invention (Charts II-A) or to patentably indistinct
inventions (Charts II-B). The charts also include first to invent (FTI) versions (i.e.,
Charts I-A_FTI, I-B_FTI, II-A_FTI, and II-B_FTI) for use when examining an application that
is subject to
35 U.S.C.
102
and
103
in effect on March 15, 2013 (e.g.,
pre-AIA 35 U.S.C.
102
and
103
) and America Invents Act (AIA)
versions (i.e., Charts I-A_AIA, I-B_AIA, II-A_AIA, and II-B_AIA) for use when examining an
application that is subject to
35 U.S.C. 102
and
103
in
effect on March 16, 2013 (
AIA 35 U.S.C. 102
and
103
).
Therefore, in certain situations, examiners may have to use the FTI versions of the charts
for an earlier-filed application that is subject to
pre-AIA 35 U.S.C. 102
and
103
and the AIA versions of the charts for the later-filed application that is subject to
AIA 35 U.S.C.
102
and
103
or vice versa. The charts show
possible rejections based upon an earlier-filed application or patent that may be
applicable if the record supports such rejections. For example, examiners should determine
if an earlier-filed application or patent is prior art under
pre-AIA 35 U.S.C.
102(e)
or
35 U.S.C. 102(a)(2)
before making an
anticipation or obviousness rejection based upon the earlier-filed application or patent.
The AIA versions of the charts provide that a (provisional)
rejection under
35 U.S.C
t may be
applicable if the record supports such rejections. For example, examiners should determine
if an earlier-filed application or patent is prior art under
pre-AIA 35 U.S.C.
102(e)
or
35 U.S.C. 102(a)(2)
before making an
anticipation or obviousness rejection based upon the earlier-filed application or patent.
The AIA versions of the charts provide that a (provisional)
rejection under
35 U.S.C. 102(a)(2)
should not be applied if the earlier-filed
application or patent is not prior art in view of
35 U.S.C. 102(b)(2)(A) or
(B)
. The evidence necessary to show that the disclosure is by the
inventor or a joint inventor or another who obtained the subject matter disclosed from the
inventor or a joint inventor, and is therefore not prior art in view of
35 U.S.C.
102(b)(2)(A)
, requires a case-by-case analysis, which depends on
whether it is apparent from the disclosure itself or the patent application specification
that the disclosure is an inventor-originated disclosure. In the situation where a previous
public disclosure by the inventor or a joint inventor (or which originated with the
inventor or a joint inventor) was not within the grace period but was effective to
establish that an intervening disclosure was not
35 U.S.C.
102(a)(2)
prior art in view of the exception of
35 U.S.C.
102(b)(2)(B)
, the previous inventor-originated public disclosure
would qualify as prior art under
35 U.S.C. 102(a)(1)
and no exception
provision could possibly apply. See
MPEP §§ 717
et seq.
and
2155
et seq.
for more information about the prior art exceptions under
35 U.S.C.
102(b)(2)
.
The AIA versions of the charts do not address the transition
cases in which
pre-AIA 35
U.S.C. 102(g)
applies to applications subject to
AIA 35 U.S.C.
102
and
103
. See
MPEP §
2159.03
to determine if an application is a transition
application. Examiners should consult with a Technology Center Practice Specialist if an
application is a transition application and the examiner finds potential
pre-AIA 35 U.S.C.
102(g)
issues
charts do not address the transition
cases in which
pre-AIA 35
U.S.C. 102(g)
applies to applications subject to
AIA 35 U.S.C.
102
and
103
. See
MPEP §
2159.03
to determine if an application is a transition
application. Examiners should consult with a Technology Center Practice Specialist if an
application is a transition application and the examiner finds potential
pre-AIA 35 U.S.C.
102(g)
issues.
Finally, the AIA versions of the charts also do not address
rejections under
35
U.S.C. 101
and
115
for improper naming of inventor.
Although the AIA eliminated
pre-AIA 35 U.S.C. 102(f)
, the patent
laws still require the naming of the actual inventor or joint inventors of the claimed
subject matter. See
35 U.S.C. 115(a)
. In the rare situation
where there is evidence on the record that the application does not name the correct
inventorship, examiners should consult
MPEP § 2157
to determine if a rejection
under
35 U.S.C.
101
and
115
should be made.
See
MPEP § 2258
for information pertaining to
double patenting rejections in reexamination proceedings.
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 which share the same inventive entity, at least one common (joint)
inventor, a common applicant, and/or a common owner/assignee. See
In re
Hubbell,
709 F.3d 1140, 1146-47, 106 USPQ2d 1032, 1037-38 (Fed. Cir
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 which share the same inventive entity, at least one common (joint)
inventor, a common applicant, and/or a common owner/assignee. See
In re
Hubbell,
709 F.3d 1140, 1146-47, 106 USPQ2d 1032, 1037-38 (Fed. Cir.
2013) (in the context of an application and a patent that had two common joint
inventors, but different inventive entities and no common owners or assignees, the
court held that complete identity of ownership or inventive entities is not a
prerequisite to a nonstatutory double patenting rejection). Double patenting may also
exist where the inventions claimed in a patent and an application were made as a
result of 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)
. Since the inventor/applicant/patent
owner has already secured the issuance of a first patent, the examiner must determine
whether the grant of a second patent would give rise to an unjustified extension of
the rights granted in the first patent.
B.
Between Copending Applications—Provisional Rejections
An examiner may become aware of two or more copending applications
which share the same inventive entity, at least one common (joint) 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
ions—Provisional Rejections
An examiner may become aware of two or more copending applications
which share the same inventive entity, at least one common (joint) 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 (
35 U.S.C. 122
), 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.
In re
Mott,
539 F.2d 1291, 190 USPQ 536 (CCPA 1976);
In re
Wetterau,
356 F.2d 556, 148 USPQ 499 (CCPA 1966). An application that
was published under
35 U.S.C. 122(b)
without redactions can be utilized as a
double patenting reference without violating the confidential status required by
35 U.S.C.
122
. An unpublished application, or an application that has
been published as redacted, can be utilized as a double patenting reference without
violating the confidential status required by
35 U.S.C. 122
when it has at
least one common (joint) inventor, applicant, assignee, or owner, or is deemed
commonly owned (
35 U.S.C. 102(c)
or
pre-AIA 35
U.S.C. 103(c)(2)
) with the application under examination. See
MPEP §§
2136.01
and
2154.01(d)
for information on provisional rejections based
on prior art. The merits of such a provisional rejection can be addressed by both the
applicant and the examiner without waiting for the first patent to issue.
A provisional double patenting rejection should be made and
maintained by the examiner until the rejection has been obviated or is no longer
applicable except as noted below.
1
and
2154.01(d)
for information on provisional rejections based
on prior art. The merits of such a provisional rejection can be addressed by both the
applicant and the examiner without waiting for the first patent to issue.
A provisional double patenting rejection should be made and
maintained by the examiner until the rejection has been obviated or is no longer
applicable except as noted below.
1.
Provisional Nonstatutory Double Patenting Rejections
A complete response to a nonstatutory double
patenting (NSDP) 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 accordance with
37 CFR
1.321
in the pending application(s) with a reply to the
Office action (see
MPEP § 1490
for a discussion of terminal disclaimers).
Such a response is required even when the nonstatutory double patenting rejection
is provisional.
As filing a terminal disclaimer, or filing a showing
that the claims subject to the rejection are patentably distinct from the
reference application’s claims, is necessary for further consideration of the
rejection of the claims, such a filing should not be held in abeyance. Only
compliance with objections or requirements as to form not necessary for further
consideration of the claims may be held in abeyance until allowable subject matter
is indicated. Replies with an omission should be treated as provided in
MPEP §
714.03
. Therefore, an application must not be allowed
unless the required compliant terminal disclaimer(s) is/are filed and/or the
withdrawal of the nonstatutory double patenting rejection(s) is made of record by
the examiner. See
MPEP § 804.02
, subsection VI, for filing terminal
disclaimers required to overcome nonstatutory double patenting rejections in
applications filed on or after June 8, 1995
.03
. Therefore, an application must not be allowed
unless the required compliant terminal disclaimer(s) is/are filed and/or the
withdrawal of the nonstatutory double patenting rejection(s) is made of record by
the examiner. See
MPEP § 804.02
, subsection VI, for filing terminal
disclaimers required to overcome nonstatutory double patenting rejections in
applications filed on or after June 8, 1995.
If two (or more) pending applications are filed, in each of which
a rejection of one claimed invention over the other on the ground of provisional
nonstatutory double patenting (NSDP) is proper, the provisional NSDP rejection
will be made in each application. Where there are three applications containing
claims that conflict such that a provisional NSDP rejection is made in each
application based upon the other two, and it is necessary to file terminal
disclaimers to overcome the rejections, it is not sufficient to file a terminal
disclaimer in only one of the applications addressing the other two applications.
Rather, an appropriate terminal disclaimer must be filed in at least two of the
applications to require common ownership or enforcement for all three
applications. A terminal disclaimer may be required in each of the three
applications in certain situations. See subsections (a)-(c) below. See also
MPEP §
1490
, subsection VI.D.
(a)
Patent Term Filing Date for Original
Utility or Plant Applications
The doctrine of double patenting seeks to prevent
the unjustified extension of patent exclusivity beyond the term of a patent.
For utility and plant patents issuing on applications filed on or after June 8,
1995,
35
U.S.C. 154(a)(2)
provides that the patent term ends on
the date that is twenty years from the date on which the application for the
patent was filed in the United States, or if the application contains a
specific reference to one or more earlier-filed application(s) under
35
U.S.C. 120
,
121
,
365(c)
,
or
386(c)
, twenty years from the filing date of the
earliest such application
June 8,
1995,
35
U.S.C. 154(a)(2)
provides that the patent term ends on
the date that is twenty years from the date on which the application for the
patent was filed in the United States, or if the application contains a
specific reference to one or more earlier-filed application(s) under
35
U.S.C. 120
,
121
,
365(c)
,
or
386(c)
, twenty years from the filing date of the
earliest such application. For a patent that issues on an international (PCT)
application that entered the national stage under
35 U.S.C.
371
, the date that the application was filed in the
United States is the international filing date; see
MPEP § 2701
,
subsection II. Thus, where there are two or more original applications
(applications which are not reissue applications - see
MPEP § 201.02
)
with conflicting (i.e., patentably indistinct) claims, it may be necessary to
determine the respective date from which the twenty year term is measured in
view of
35
U.S.C. 154(a)(2)
(hereinafter referred to as the “patent
term filing date”) for each of the applications which could potentially issue
as patents.
The patent term filing date of an original utility or plant
application filed on or after June 8, 1995 is the earliest of:
(1) The actual filing date of the application;
or
(2) The filing date of the earliest application
for which the application claims the benefit of an earlier filing date
under
35 U.S.C. 120
,
121
,
365(c)
, or
386(c)
. See
37 CFR 1.78
. See also
MPEP §
211
.
For example, if an original (non-reissue; see
MPEP §
201.02
) patent application has no specific reference
to any earlier-filed application under
35 U.S.C. 120
,
121
,
365(c)
, or
386(c)
, then the patent term filing date is the date
that the application was actually filed. However, if an original patent
application does include one or more specific references to an earlier-filed
application under
35 U.S.C. 120
,
121
,
365(c)
, or
386(c)
, then the patent term filing date is the filing
date of the earliest reference application for which the benefit is properly
claimed
, or
386(c)
, then the patent term filing date is the date
that the application was actually filed. However, if an original patent
application does include one or more specific references to an earlier-filed
application under
35 U.S.C. 120
,
121
,
365(c)
, or
386(c)
, then the patent term filing date is the filing
date of the earliest reference application for which the benefit is properly
claimed. See
MPEP § 2701
. For an application to properly claim
the benefit of an earlier-filed application, it must meet the requirements of
37 CFR
1.78
(e.g., having a (joint) inventor in common,
copendency, timeliness, and a proper reference). See
37 CFR
1.78
and
MPEP §
211.01
et seq.
It does not require a determination that the
earlier-filed application discloses the invention in a manner provided by
35 U.S.C. 112(a)
. In other words, the issue of
entitlement of a claimed invention to the benefit of the filing date of an
earlier-filed application does not affect the expiration date of a patent
containing the claims, and therefore need not be considered when determining
the patent term filing date for the purpose of a double patenting analysis.
The patent term filing date of a reissue
application for purposes of nonstatutory double patenting analysis is the
patent term filing date of the original application that resulted in the patent
for which reissue is sought.
Benefit claims under
35 U.S.C.
119(e)
and foreign priority claims under
35 U.S.C.
119(a)-(d) or (f)
,
365(a) or (b)
, or
386(a) or (b)
are not taken into account when
determining the term of an issued patent (see
35 U.S.C.
154(a)(2)
and
(a)(3)
), and therefore, are
not taken into account in determining the patent term filing date of an
application.
sulted in the patent
for which reissue is sought.
Benefit claims under
35 U.S.C.
119(e)
and foreign priority claims under
35 U.S.C.
119(a)-(d) or (f)
,
365(a) or (b)
, or
386(a) or (b)
are not taken into account when
determining the term of an issued patent (see
35 U.S.C.
154(a)(2)
and
(a)(3)
), and therefore, are
not taken into account in determining the patent term filing date of an
application.
(b)
Provisional nonstatutory double patenting
rejection is the only rejection remaining in a utility or plant
application
Subsections (i)-(iv) below discuss examination procedures when two or more
utility or plant patent applications, filed on or after June 8, 1995, contain
provisional nonstatutory double patenting rejections over each of the other
application(s). The explanations refer to pairs of applications, but also apply
when more than two applications are involved.
(i)
Application under examination has the earlier patent term filing
date
If a provisional nonstatutory double patenting
rejection is the only rejection remaining in an application having the
earlier patent term filing date, the examiner should withdraw the rejection
in the application having the earlier patent term filing date and permit
that application to issue as a patent, thereby converting the provisional
nonstatutory double patenting rejection in the other application into a
nonstatutory double patenting rejection upon issuance of the patent.
maining in an application having the
earlier patent term filing date, the examiner should withdraw the rejection
in the application having the earlier patent term filing date and permit
that application to issue as a patent, thereby converting the provisional
nonstatutory double patenting rejection in the other application into a
nonstatutory double patenting rejection upon issuance of the patent.
(ii)
Application under examination has the same patent term filing
date
If both the application under examination and
the reference application have the same patent term filing date, the
provisional nonstatutory double patenting rejection made in each application
should be maintained until it is overcome. Provisional nonstatutory double
patenting rejections are subject to the requirements of
37 CFR
1.111(b)
. Thus, applicant can overcome a provisional
nonstatutory double patenting rejection by filing a reply that either shows
that the claims subject to the rejection are patentably distinct from the
claims of the reference application, or includes a compliant terminal
disclaimer under
37 CFR 1.321
that
obviates the rejection. If the reply is sufficient, the examiner will
withdraw the nonstatutory double patenting rejection in the application in
which it was submitted.
(iii)
Application under examination has the later patent term filing
date
If a provisional nonstatutory double patenting
rejection is the only rejection remaining in an application, and that
application has the later patent term filing date, the rejection should be
maintained until applicant overcomes the rejection. Replies to overcome the
rejection are discussed in subsection (ii) above.
bmitted.
(iii)
Application under examination has the later patent term filing
date
If a provisional nonstatutory double patenting
rejection is the only rejection remaining in an application, and that
application has the later patent term filing date, the rejection should be
maintained until applicant overcomes the rejection. Replies to overcome the
rejection are discussed in subsection (ii) above.
(iv)
After Board decision not reaching provisional double patenting
rejection
If a decision by the Patent Trial and Appeal
Board does not include an opinion on a provisional nonstatutory double
patenting rejection, and includes a reversal of all other grounds as to a
claim rejected based on provisional nonstatutory double patenting, and the
applicant has not filed a proper terminal disclaimer, the examiner must act
upon the provisional nonstatutory double patenting rejection. The examiner
must first determine if any reference application used in the provisional
nonstatutory double patenting rejection has issued as a patent. If the
reference application has issued, the provisional rejection should be
re-issued as a nonprovisional rejection and a terminal disclaimer should be
required, for example, by using form paragraphs 8.33-8.39 as appropriate.
See
MPEP §
804
, subsection II.B. The rejection may be made
final, if otherwise appropriate. If the reference application has been
abandoned or where the reference application has not matured to a patent and
the provisional double patenting rejection is the only remaining rejection
in the application, the examiner should withdraw the provisional rejection.
See
MPEP §
1214.06
.
8.39 as appropriate.
See
MPEP §
804
, subsection II.B. The rejection may be made
final, if otherwise appropriate. If the reference application has been
abandoned or where the reference application has not matured to a patent and
the provisional double patenting rejection is the only remaining rejection
in the application, the examiner should withdraw the provisional rejection.
See
MPEP §
1214.06
.
(c)
Design Applications and Utility or Plant Applications Filed Prior
to June 8, 1995
For design applications, patent term is measured
from the issue date, and therefore, the determination of the patent term filing
date is not necessary. If a provisional double patenting rejection (statutory
or nonstatutory) is the only rejection remaining in the earlier filed of the
two conflicting design applications, the examiner should withdraw that
rejection and permit that application to issue as a patent. The examiner should
maintain the provisional double patenting rejection in the later filed
application and that rejection will be converted into a double patenting
rejection when the allowed application issues as a patent unless the rejection
has already been obviated. If both conflicting applications were filed on the
same date, the provisional double patenting rejection made in each application
should be maintained until it is overcome. See also
MPEP §
804.03
, subsection IV, to resolve issues in
applications that name different inventors and claim indistinct inventions.
For double patenting analysis involving a
utility or plant application filed prior to June 8, 1995, examiners should
consult with their TQAS or SPE to determine if any of the provisional
nonstatutory double patenting rejections should be withdrawn or not made.
Likewise, for double patenting analysis for a utility or plant application and
a reference design application or vice versa, examiners should consult with
their TQAS or SPE to determine if any of the provisional nonstatutory double
patenting rejections should be withdrawn or not made.
2
to determine if any of the provisional
nonstatutory double patenting rejections should be withdrawn or not made.
Likewise, for double patenting analysis for a utility or plant application and
a reference design application or vice versa, examiners should consult with
their TQAS or SPE to determine if any of the provisional nonstatutory double
patenting rejections should be withdrawn or not made.
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, an amendment in response to the statutory double
patenting rejection, or cancelation of the conflicting claims. Such a response is
required even when the statutory double patenting rejection is provisional.
When two or more utility or plant patent applications, filed on or
after June 8, 1995, each contain a provisional statutory double patenting
rejection, and that is the only rejection remaining in the application having the
earliest patent term filing date, the examiner should withdraw the rejection in
the application having the earliest patent term filing date and permit that
application to issue as a patent, thereby converting the provisional statutory
double patenting rejection in the other application(s) into a statutory double
patenting rejection when the application with the earliest patent term filing date
issues as a patent
term filing date, the examiner should withdraw the rejection in
the application having the earliest patent term filing date and permit that
application to issue as a patent, thereby converting the provisional statutory
double patenting rejection in the other application(s) into a statutory double
patenting rejection when the application with the earliest patent term filing date
issues as a patent.
If a provisional statutory double patenting rejection is the only
rejection remaining in an application, and that application has a patent term
filing date that is later than, or the same as, the patent term filing date of at
least one of the reference application(s), the rejection should be maintained
until applicant overcomes the rejection. In accordance with
37 CFR
1.111(b)
, applicant’s reply must present arguments pointing
out the specific distinctions believed to render the claims, including any amended
or newly presented claims, patentable over any applied references.
For design applications and utility or plant
applications filed prior to June 8, 1995, see subsection I.B.1(c) above for
guidance on maintaining or withdrawing provisional statutory double patenting
rejections.
C.
Between One or More Applications and a Published Application -
Provisional Rejections
Double patenting may exist where a published patent application and
an application share the same inventive entity, at least one common (joint) 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
pplication and
an application share the same inventive entity, at least one common (joint) 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. See the
discussion regarding provisional double patenting rejections in subsection B.
above.
D.
Between a Patent and a Reissue
Application or Patent under Reexamination
When a potential nonstatutory double patenting
situation arises between two related patents (as in a reissue or reexamination), it
is necessary to determine whether the patents are subject to the same patent term
statutory law. Section 532(a)(1) of the Uruguay Round Agreements Act (URAA) (Pub. L.
No. 103-465, 108 Stat. 4809, 4983 (1994)) amended
35 U.S.C. 154
to provide that the
term of a plant or utility patent issuing from an original application filed on or
after June 8, 1995, i.e., a post-URAA patent, begins on the date the patent issues
and ends on the date that is twenty years from the date on which the application for
the patent was filed in the United States or, if the application contains a specific
reference to an earlier filed application or applications under
35 U.S.C.
120
,
121
, or
365(c)
, twenty
years from the filing date of the earliest of such application(s) (excluding any
terminal disclaimers or any patent term adjustment or extension). The Patent Law
Treaties Implementation Act of 2012, Public Law 112-211, which implemented the
provisions of the Hague Agreement, amended
35 U.S.C
ic
reference to an earlier filed application or applications under
35 U.S.C.
120
,
121
, or
365(c)
, twenty
years from the filing date of the earliest of such application(s) (excluding any
terminal disclaimers or any patent term adjustment or extension). The Patent Law
Treaties Implementation Act of 2012, Public Law 112-211, which implemented the
provisions of the Hague Agreement, amended
35 U.S.C. 154(a)(2)
to delete
“section 120, 121, or 365(c)” and to insert “section 120, 121, 365(c), or 386(c)” and
35 U.S.C.
154(a)(3)
to delete “section 119, 365(a), or 365(b)” and to
insert “section 119, 365(a), 365(b), 386(a), or 386(b).” See
MPEP § 2701
.
A plant or utility patent that was in force on June 8,
1995, or that issued on an application that was filed before June 8, 1995, i.e., a
pre-URAA patent, has a term that is the greater of twenty years from the date on
which the application for the patent was filed in the United States or, if the
application contains a specific reference to an earlier filed application or
applications under
35 U.S.C. 120
,
121
, or
365(c)
, twenty years from the filing date of the earliest of
such application(s) or seventeen years from the patent grant. Filing for reissue on
or after June 8, 1995 of a patent issued on an original application filed prior to
June 8, 1995 does not change the patent term of the patent or the reissued patent.
See
MPEP §§
1405
and
2701
for more information.
“[T]he proper reference point for an obviousness-type
double patenting inquiry is the expiration date of the patent in question.”
Novartis Pharms. v. Breckenridge Pharm.,
909 F.3d 1355,
1362-63, 128 USPQ2d 1745, 1747 (Fed. Cir. 2018) (citing
Gilead Sciences,
Inc. v. Natco Pharma Ltd.,
753 F.3d 1208, 1215, 110 USPQ2d 1551, 1558
(Fed. Cir. 2014))
tent.
See
MPEP §§
1405
and
2701
for more information.
“[T]he proper reference point for an obviousness-type
double patenting inquiry is the expiration date of the patent in question.”
Novartis Pharms. v. Breckenridge Pharm.,
909 F.3d 1355,
1362-63, 128 USPQ2d 1745, 1747 (Fed. Cir. 2018) (citing
Gilead Sciences,
Inc. v. Natco Pharma Ltd.,
753 F.3d 1208, 1215, 110 USPQ2d 1551, 1558
(Fed. Cir. 2014)).
Where both the patent under examination (via a
reexamination proceeding or a reissue application) and the reference patent are
post-URAA, “an earlier-expiring patent can qualify as an obviousness-type double
patenting reference for a later-expiring patent.”
Gilead Sciences, Inc. v.
Natco Pharma Ltd.,
753 F.3d 1208, 1217, 110 USPQ2d 1551, 1558 (Fed. Cir.
2014). See also
Novartis Pharms. v. Breckenridge Pharm.,
909 F.3d
1355, 1360, 128 USPQ2d 1745, 1747 (Fed. Cir. 2018) (
Gilead
“holds
that a later-filed but earlier-expiring patent can serve as a double-patenting
reference for an earlier-filed but later-expiring patent in the post-URAA context.”).
However, where at least one of the patent under examination (via a reexamination
proceeding or a reissue application) or the reference patent is pre-URAA, the patent
with the earlier issuance date is available as a reference against a patent with a
later issuance date “because, under the law pre-URAA, the expiration date of the
patent was inextricably intertwined with the issuance date.”
Id.
at 1362, 128 USPQ2d at 1749. Based on the particular facts in
Novartis,
the court held that the post-URAA patent that expired
prior to the pre-URAA patent is not a proper nonstatutory double patenting reference
for the pre-URAA patent.
Id.
at 1367, 128 USPQ2d at 1752 (“To find
that obviousness-type double patenting applies here because a post-URAA patent
expires earlier would abrogate Novartis’s right to enjoy one full patent term on its
invention.”)
acts in
Novartis,
the court held that the post-URAA patent that expired
prior to the pre-URAA patent is not a proper nonstatutory double patenting reference
for the pre-URAA patent.
Id.
at 1367, 128 USPQ2d at 1752 (“To find
that obviousness-type double patenting applies here because a post-URAA patent
expires earlier would abrogate Novartis’s right to enjoy one full patent term on its
invention.”). An examiner should consult with the TC Quality Assurance Specialist if
an otherwise proper nonstatutory double patenting rejection is not being made based
on
Novartis.
See
MPEP §
804.05
for information regarding the impact of patent term
extension on a double patenting analysis.
E.
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.
In re Lonardo,
119 F.3d 960, 966, 43 USPQ2d 1262, 1266
(Fed. Cir. 1997) (In giving the Director authority under
35 U.S.C.
303(a)
to determine the presence of a substantial new question
of patentability, “Congress intended that the phrases ‘patents and publications’ and
‘other patents or publications’ in
section 303(a)
not be limited to
prior art
patents or printed publications.”) (emphasis added).
Accordingly, if the same issue of double patenting was not addressed during original
prosecution, it may be considered during reexamination.
Double patenting may exist where a reference patent or application
and the patent under reexamination share the same inventive entity, at least one
common (joint) inventor, a common applicant, and/or a common owner/assignee. Where
the patent under reexamination was granted on or after December 10, 2004, double
patenting may also exist where the inventions claimed in the reference and
reexamination proceeding resulted from activities undertaken within the scope of a
joint research agreement pursuant to
35 U.S.C. 102(c)
or
pre-AIA 35
U.S.C
one
common (joint) inventor, a common applicant, and/or a common owner/assignee. Where
the patent under reexamination was granted on or after December 10, 2004, double
patenting may also exist where the inventions claimed in the reference and
reexamination proceeding resulted from activities undertaken within the scope of a
joint research agreement pursuant to
35 U.S.C. 102(c)
or
pre-AIA 35
U.S.C. 103(c)(2) and (3)
, as applicable, and if evidence of the
joint research agreement has been made of record in the patent being reexamined or in
the reexamination proceeding. A double patenting rejection may NOT be made on this
basis if the patent under reexamination issued before December 10, 2004. See
MPEP §
804.03
.
The prior art exception under
35 U.S.C.
102(b)(2)(C)
or disqualification under
pre-AIA 35 U.S.C.
103(c)
generally cannot be used to overcome a double patenting
rejection, whether statutory or nonstatutory. However, since a secondary reference
used to support an obviousness analysis for a nonstatutory double patenting rejection
must be prior art, a reference excepted under
35 U.S.C.
102(b)(2)(C)
cannot be used as a secondary reference in a
nonstatutory double patenting rejection. See
MPEP §§
717.02
et seq.
and
2154.02(c)
for more information on
35
U.S.C. 102(b)(2)(C)
and
MPEP § 2146
for more information on
pre-AIA 35
U.S.C. 103(c)
. See
MPEP § 2258
for more information on
making double patenting rejections in reexamination proceedings. Subsection II,
below, describes situations wherein a double patenting rejection would be
appropriate. In particular, see paragraph II.B. for the analysis required to
determine the propriety of a nonstatutory double patenting rejection.
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
B. for the analysis required to
determine the propriety of a nonstatutory double patenting rejection.
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
.
Where the claims of an application are the same as those of a first
patent, they are barred under
35 U.S.C. 101
- the statutory basis
for a double patenting rejection. A rejection based on double patenting of the “same
invention” finds its support in the language of
35 U.S.C. 101
which states that
“whoever invents or discovers any new and useful process ... may obtain
a
patent therefor ...” (emphasis added). Thus, the term “same invention,” in this context,
means an invention drawn to identical subject matter.
Miller v.
Eagle Mfg. Co.,
151 U.S. 186 (1894);
In re Vogel,
422 F.2d 438, 164 USPQ 619 (CCPA 1970);
In re Ockert,
245 F.2d 467,
114 USPQ 330 (CCPA 1957).
Where the claims of an application are not the “same” as
those of a first patent, but the grant of a patent with the claims in the application
would unjustly extend the rights granted by the first patent, a double patenting
rejection under nonstatutory grounds is proper.
In determining whether a proper basis exists to enter a double patenting
rejection, the examiner must determine the following:
(A) Whether a statutory basis exists;
(B) Whether a nonstatutory basis exists; and
(C) Whether a nonstatutory double patenting rejection is prohibited by
the third sentence of
35 U.S.C. 121
(see
MPEP §
804.01
; if such a prohibition applies, a nonstatutory
double patenting rejection cannot be made)
roper basis exists to enter a double patenting
rejection, the examiner must determine the following:
(A) Whether a statutory basis exists;
(B) Whether a nonstatutory basis exists; and
(C) Whether a nonstatutory double patenting rejection is prohibited by
the third sentence of
35 U.S.C. 121
(see
MPEP §
804.01
; if such a prohibition applies, a nonstatutory
double patenting rejection cannot be made).
Each determination must be made on the basis of all the facts in the
application before the examiner. The charts in
MPEP § 804
illustrate the methodology
of making such a determination.
Domination and double patenting should not be confused. They are two
separate issues. One patent or application “dominates” a second patent or application
when the first patent or application has a broad or generic claim which fully
encompasses or reads on an invention defined in a narrower or more specific claim in
another patent or application. Domination by itself, i.e., in the absence of statutory
or nonstatutory double patenting grounds, cannot support a double patenting rejection.
In re Kaplan,
789 F.2d 1574, 1577-78, 229 USPQ 678, 681 (Fed. Cir.
1986);
In re Sarett,
327 F.2d 1005, 1014-15, 140 USPQ 474, 482 (CCPA
1964). However, the presence of domination does not preclude a double patenting
rejection. See, e.g.,
In re Schneller,
397 F.2d 350, 158 USPQ 210
(CCPA 1968); see also
AbbVie Inc. v. Kennedy Institute of Rheumatology
Trust,
764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014).
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.
Miller v.
Eagle Mfg. Co.,
151 U.S. 186 (1894);
In re
Vogel,
422 F.2d 438, 164 USPQ 619 (CCPA 1970);
In re
Ockert,
245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A reliable test for double patenting under
35 U.S.C
s, 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.
Miller v.
Eagle Mfg. Co.,
151 U.S. 186 (1894);
In re
Vogel,
422 F.2d 438, 164 USPQ 619 (CCPA 1970);
In re
Ockert,
245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A reliable test for double patenting under
35 U.S.C. 101
is whether a claim in the application could be literally infringed without literally
infringing a corresponding claim in the patent.
In re Vogel,
422
F.2d 438, 164 USPQ 619 (CCPA 1970). Is there an embodiment of the invention that
falls within the scope of one claim, but not the other? If there is such an
embodiment, then identical subject matter is not defined by both claims and statutory
double patenting would not exist. For example, the invention defined by a claim
reciting a compound having a “halogen” substituent is not identical to or
substantively the same as a claim reciting the same compound except having a
“chlorine” substituent in place of the halogen because “halogen” is broader than
“chlorine.” On the other hand, claims may be differently worded and still define the
same invention. Thus, a claim reciting a widget having a length of “36 inches”
defines the same invention as a claim reciting the same widget having a length of “3
feet.”
If it is determined that the same invention is being claimed twice,
35 U.S.C.
101
precludes the grant of the second patent regardless of the
presence or absence of a terminal disclaimer.
Id.
Form paragraphs
8.30
and
8.31
(between an
issued patent and one or more applications) or
8.32
(provisional rejections) may be
used to make statutory double patenting rejections.
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.