Double patenting is an issue that arises during the examination of an application for a patent. It occurs when an inventor attempts to obtain multiple patents for the same invention or obvious variations of the same invention. This leads to a rejection of a patent application because the Patent Office does not want inventors to have patents of different patent terms related to the same invention.
What are the types of double patenting rejections?
Two types of double patenting rejections exist: statutory and nonstatutory.
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.
Why is the purpose of a double patenting rejection?
The purpose of the double patenting rejection is to prevent inventors from obtaining patent protection for greater than 20 years on an invention.
The patent system in the United States gives inventors patent rights that last 20 years from the first filed nonprovisional patent application. The patent law is set up so that inventors can’t secure patent rights that last longer than the 20-year term. However, when a child application is filed, the parent patent and the child patent can have different patent terms. In that case, when the parent and child patents have identical claims, it’s possible that the claims of the respective patents will have a different patent term. During the examination, the examiner will give the inventor a statutory double patenting rejection in the child application so that the child application cannot be granted as a patent.
How to overcome statutory and nonstatutory double patenting rejections?
The primary way to respond to a double patenting rejection is to make the patent term of the child application coterminous as the parent patent. To do so, the inventor will file a Terminal Disclaimer which states that the patent term of the child patent will expire at the same time that the patent term of the parent patent expires.
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 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 so much revenue and profits for the owner that 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.