Double Patenting Rejection - An Opportunity or Misfortune?
What is Double Patenting?
Double Patenting is the granting of two patents for the same invention, to the same patent owner. A continuing patent application is a patent application that follows and claims priority to an earlier-filed patent application. In the US, there is a prohibition in patent law against allowing an invention to be claimed twice.
There are generally two types of double patenting rejections:
1. One is the “statutory-type” double patenting rejection based on 35 U.S.C. 101 which states in the singular that an inventor "may obtain a patent." In other words, for an invention, one can have one patent, not two. Statutory Double Patenting rejections are often issued by the USPTO when a claim in a continuation, divisional or continuation-in-part application is identical in scope to a claim that was also made in the parent application.
2. 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."
How Can an Applicant Overcome Double Patenting?
To overcome a statutory double patenting rejection: In general, if the claims are actually the same, one would need to either cancel or modify them. However, even if there’s just a one-word difference, that could be enough. The general test is - can a person think of a way to infringe one of the claims but not the other? If so, they’re not actually identical.
To overcome a non-statutory double patenting rejection: Compared with the statutory version, there are more options to consider with this type of rejection.
1. Holding the rejection in abeyance - When an applicant holds a non-statutory double patenting in abeyance, essentially the Applicant is telling the examiner that prosecution is open on the applicant and there is a strong chance that the claims will be amended in the future, so there is no need to discuss this matter now. Thus, the rejection will be held in “abeyance” to be dealt with at a later time, if necessary. If a double patenting rejection is held in abeyance, it is important to address this before the application is granted. If not the granted patent may be held invalid if litigated. The second way to overcome a double patenting rejection is to file a terminal disclaimer.
2. Filing a terminal disclaimer- In general, there are two reasons why the non-statutory double patenting rejection exists.
The Patent Office does not allow an applicant to obtain a length-of-term benefit from having claims on the same subject matter in two different patents. Accordingly, the applicant is required to forego (i.e., “disclaim”) any potential period of time where the new patent would outlast the earlier one.
The Patent Office also does not allow two different entities to be able to enforce the same patent rights. Accordingly, both of the patents are required to remain under the same ownership. Based on that, applicants usually file for a Terminal Disclaimer. It says that (a) the second patent won’t be allowed to extend its coverage for a longer time than the first one, and (b) the new patent won’t be enforceable if it’s not under the same proprietor as the first one.
3. Amending the claims - If a person doesn’t wish to proceed with the Terminal Disclaimer, then there is another way to overcome a non-statutory double patenting rejection which is by amending the claims that were rejected to include additional limitations that wouldn’t be considered obvious.
However, the Federal Circuit’s decisions in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2014), and Abbvie v. Mathilda & Terence Kennedy Institute, 764 F. 3d 1366 (Fed. Cir. 2014), have reaffirmed the ODP (Obviousness-type double patenting) doctrine.
Can Inventors Intentionally Cause Double Patenting Rejection in Order to Broaden Their Patent Portfolio?
The answer to this would be yes, this can indeed be used as an opportunity to broaden a patent portfolio. An applicant can file for a continuation patent application claiming an invention similar to the one claimed in the first patent. In the case the applicant gets rejection, and it is a non-statutory double patenting rejection, then the applicant can file for a terminal disclaimer which will allow him to have one more patent for an invention similar to the one claimed in the first patent. Now, if a manufacturer makes, uses, sells and/or offers for sale a product that uses patented technology and infringes on the first patent, then it may also infringe on the second patent. This way patent infringement damages are increased per patent, as the product infringes multiple patents. Hence, this increases the strength of the patent portfolio.
Uday is a research analyst at Copperpod. He has a Bachelor's degree in Electronics and Communication Engineering. His interest areas are Microcontrollers, IoT, Semiconductors, and Memory Devices.
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