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You are here: Home / Patent application process / After Filing a Patent Application / Patent Prosecution / Office Action / What is a double patenting rejection?

What is a double patenting rejection?

January 24, 2023 by James Yang

A Double Patenting Rejection is a common issue faced by inventors who try to obtain two or more patents for the same or similar invention. Why someone would want more than two patents for the same invention?  Isn’t that redundant and a waste of money?

What is the purpose and problem of obtaining two or more patents on an invention?

Obtaining two patents on an invention isn’t necessarily a waste of money.  Here’s why.

Typically, what we as patent attorneys are trying to do is to obtain claim coverage for the same invention in different ways and of varying scopes. We do that by filing multiple continuation applications with different but similar claims.  During litigation, every word in the claim counts. As such, we’re trying to change the words to enlarge the scope of the claims. We’re also narrowing the claim scope in order to survive an invalidity attack.

However, in doing so, it’s possible that two or more of the patents may have different patent terms due to Patent Term Adjustments. A Patent Term Adjustment (PTA) is an extension of the patent term for delays caused by the USPTO. Any PTA is an extension to the 20-year lifespan of the issued U.S. patent.

In the eyes of the US Patent Office, filing multiple applications with different claims scopes is seen as an unauthorized attempt to extend the patent term of the invention.  Patents by law expire 20 years from the first filed nonprovisional patent application.

Hence, the double patenting rejection.

What are the types of double patenting rejections?

Two types of double patenting rejections exist:

  1. Statutory double patenting rejection; and
  2. Nonstatutory double patenting rejection.

A statutory double patenting rejection occurs when an inventor tries to obtain a patent for the same invention. For example, when a claim of a patent application is identical to a claim of a granted patent owned by the same inventor, the examiner will give the inventor a statutory double patenting rejection in the pending patent application.

A nonstatutory double patenting rejection also known as an obviousness-type double patenting rejection occurs when an inventor tries to obtain a second patent having claims which are an obvious variation compared to a parent patent. Because the claims are not identical (i.e., claimed inventions are not the same), the examiner we’ll give the inventor a nonstatutory double patenting rejection.

How to overcome statutory and nonstatutory double patenting rejections?

To overcome a nonstatutory double patenting rejection, a Terminal Disclaimer can be filed.  The terminal disclaimer states that the patent term of any patent from the current application will expire at the same time as the patent term of the conflicting parent patent.

The Terminal Disclaimer can only be filed for nonstatutory double patenting rejections, not statutory double patenting rejections.

For statutory double patenting rejections, the process is similar.  You modify the claims of the pending patent application to be slightly different in scope compared to the conflicting claims of the parent patent.  Now, the respective claims are obvious variations of each other.  By doing so, you convert the statutory double patenting rejection into nonstatutory double patenting rejection.  The claims are different and by definition, they will be obvious variations of each other.  You can then file the Terminal Disclaimer to overcome the nonstatutory double patenting rejection.

In certain cases, you may want to argue that the claims are not obvious variations of each other.  This is much harder to do and will require extensive argumentation.  Typically, this is beneficial when the product generates significant revenue and profits for the owner on a day-to-day basis and spending a few thousand dollars doesn’t really make much of a difference to the bottom line.

Otherwise, in many instances, the strategy for overcoming the rejection as laid out above is implemented.

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Author

James Yang is a patent attorney. For more than 16 years, James Yang has been representing clients to secure patent protection for their inventions and register trademarks to protect their brands. If you need help, call him at (949) 433-0900. Read More…

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