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.