Double Patenting

• Types of Double Patenting Rejections

nStatutory (35 U.S.C. 101) Double Patenting:

n Is There an Embodiment that Falls Within the Scope of One Claim, but Not the Other?

n   Could One Claim be Literally Infringed Without Literally Infringing the Other Claim?

--> If Examined claim and claim of potentially conflicting patent or application DO NOT exactly match in scope – DO NOT make a statutory (35 U.S.C. 101) double patenting rejection.

 

nNon-Statutory Double Patenting

nRejection based on obviousness analysis

nAnalogous to 35 U.S.C. 103 Analysis

nDetermine the Scope and Content of the Claims in the Conflicting Patent or Application

nAscertain the Differences Between the Claims in the Conflicting Patent or Application and the Claim in Issue

nResolve the Level of Ordinary Skill in the Art

nEvaluate Evidence of Secondary Considerations

nRejection based on anticipation analysis

nNon-Statutory Double Patenting Based Solely on Improper Timewise Extension of Patent Rights

* 35 U.S.C. 121 does not prohibit the rejection because xxx patent is a CIP of xxx patent.  If it is a divisional, a non-statutory DP rejection would not be proper.

Obviousness Analysis – Written Rejection

nAny Non-Statutory Double Patenting Rejection Based on an Obviousness Analysis Should Make Clear:

nThe differences between a claim in the examined application compared to a claim in the reference patent (or copending application)

nThe reasons for concluding that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent (or copending application)

How to Overcome a Proper Double Patenting Rejection

n Statutory (35 U.S.C. 101) Double Patenting

nAmend the claim(s)

nCancel the claim(s)

nA terminal disclaimer is NOT sufficient to overcome such a rejection

nDeclarations under 37 CFR 1.131 are NOT sufficient to overcome such a rejection

n Non-Statutory Double Patenting (All Types)

nAmend the claim(s)

nCancel the claim(s)

nFile a proper terminal disclaimer

nDeclarations under 37 CFR 1.131 are NOT sufficient to overcome such a rejection