• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patent
      • Utility Patents
      • Design Patents
      • Patent Application
      • Patent Defense
      • Patent Enforcement
      • Working with In-House Attorneys
    • Trademark
      • Trademark Search
      • Trademark Application
      • Trademark Enforcement
      • Trademark Defense
    • Licensing
    • Worldwide IP
    • Risk Management
    • Due Diligence
  • Industries
    • Browse Patent Samples
    • Automotive Patents
    • Construction Patents
    • Consumer Products Patents
    • Electronics Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • Tools & Equipment Patents
  • Learning Resources
    • First-Time Inventor?
    • Why Patent Your Invention in a Bad Economy?
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Simplified)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • What is a continuation patent application?
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
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

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.

  • Facebook
  • Twitter
  • LinkedIn

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…

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?
  • Why patent your invention in a bad economy?

Patent Book

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

RECEIVE PATENT ARTICLES

Stay up to date on major changes and get tips on the patent process.

We respect your privacy.

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

Utility Patents
Design Patents
Patent Prosecution Services
Patent Defense Services
Patent-Law Counsel for In-House Attorneys
Trademark Prosecution Services
See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients from all areas within Orange County and Los Angeles County, California.

© 2023 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney