Double Patenting is a doctrine primarily concerned with ensuring that Applicants do not unjustly extend a patents term. More specifically, Double patenting arises when multiple applications are filed and each of the applications contain claims including recitations considered the same or similar (Statutory Double Patenting and Obviousness-type Double Patenting, respectively). Accordingly, if an Applicant encounters a Double Patenting rejection in an Office Action, they will typically receive either: 1) a Statutory Double Patenting rejection; or 2) an Obviousness-type Double Patenting Rejection. Further, Double Patenting rejections may involve two or more pending applications (provisional rejection), or one or more pending applications and a patent.
Background
MPEP 804 states, “The doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a patent. The public policy behind this doctrine is that: The public should . . . be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications or variants which would have been obvious to those of ordinary skill in the art at the time the invention was made, taking into account the skill in the art and prior art other than the invention claimed in the issued patent. In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963) (Rich, J., concurring). Double patenting results when the right to exclude granted by a first patent is unjustly extended by the grant of a later issued patent or patents. In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982).”
As stated above, there are two primary types of Double Patenting Rejections (Statutory and Obviousness-Type).
Statutory Double Patenting finds “statutory” support in 35 U.S.C. 101 which requires that a single patent be obtained for a single invention. Further, the MPEP states that “where the claims of an application are substantively the same as those of a first patent, they are barred under 35 U.S.C. 101 – the statutory basis for a double patenting rejection. A rejection based on double patenting of the ‘same invention’ type finds its support in the language of 35 U.S.C. 101 which states that ‘whoever invents or discovers any new and useful process … may obtain a patent therefor ….’ Thus, the term ‘same invention,’ in this context, means an invention drawn to identical subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).” Accordingly, a proper Statutory Double Patent rejection requires the claims of the related applications to be “the same.”
Additionally, the MPEP advises that “a reliable test for double patenting under 35 U.S.C. 101 is whether a claim in the application could be literally infringed without literally infringing a corresponding claim in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). Is there an embodiment of the invention that falls within the scope of one claim, but not the other? If there is such an embodiment, then identical subject matter is not defined by both claims and statutory double patenting would not exist. For example, the invention defined by a claim reciting a compound having a ‘halogen’ substituent is not identical to or substantively the same as a claim reciting the same compound except having a ‘chlorine’ substituent in place of the halogen because ‘halogen’ is broader than ‘chlorine.’ On the other hand, claims may be differently worded and still define the same invention. Thus, a claim reciting a widget having a length of ’36 inches’ defines the same invention as a claim reciting the same widget having a length of ’3 feet.’”
To overcome a Statutory Double Patenting rejection, the Applicant may either argue against the propriety of the rejection or amend the claims as appropriate to thereby change the scope of the claims. However, it is critically important to remember that terminal disclaimers (which are commonly utilized to overcome Obviousness-Type Double Patenting rejections) CANNOT be employed to overcome Statutory Double Patenting rejections. The majority of Double Patenting rejections generated by the USPTO relate to the second type: Obviousness-type Double Patenting Rejections.
Obviousness-Type Double Patenting (or “non-statutory” Double Patenting) is a judicially created doctrine intended to prevent unjust patent term extensions by prohibiting claims in a second application that are not patentably distinct from claims in a first application/patent. In contrast to Statutory Double Patenting, a Terminal Disclaimer may be filed in response to an Obviousness- Type Double Patenting rejection. Further, in performing an Obviousness-Type Double Patenting analysis, a 35 USC 103 type analysis should be followed.
Strategy
In evaluating a Double Patenting rejection, the Practitioner should first ensure that: 1) “two or more patents or applications must have at least one common inventor”; and/or 2) “be either commonly assigned/owned or non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 103(c)(2) and (3).” It is critical to perform this initial review as it is possible that an improper Double Patenting rejection has been furthered which does not satisfy either of the aforementioned requirements.
Next, the Practitioner should ensure that the Examiner has focused upon the claims in furthering their prima facie case. Unlike other art-based rejections (anticipation/obviousness rejections) which employ all portions of a citation (e.g, description, figures, summary, etc.), Double Patenting rejections primarily involve the claims of a related application/patent. Accordingly, it would be improper for an Examiner to cite portions of the description of the related application/patent. However, the Specification of the related application may be used in a few limited circumstances (e.g, to obtain the meaning of claim terms). Accordingly, the Examiner must utilize the claims of the related application/patent in furthering the Double Patenting Rejection (however the teachings of the prior art may be coupled with the claims of a related application/patent in furthering an Obviousness-Type Double Patenting rejection).
Further, for a Statutory Double Patenting rejection the analysis is quite straight forward as all of the features of the claims must be found in the claims of the presently examined application and the alleged conflicting application/patent. However, for an Obviousness-Type Double Patenting rejection, the MPEP indicates that the analysis employed here somewhat similarly parallels the guidelines for a 35 U.S.C. 103(a) rejection, namely the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied in furthering an obviousness analysis under 35 U.S.C. 103. The factual inquiries required by Graham as applied here in an Obviousness-Type Double Patenting analysis include:
(A) Determining the scope and content of a patent claim (of the alleged conflicting application/patent) relative to a claim in the presently examined application;
(B) Determining the differences between the scope and content of the patent claim as determined in (A) and the claim in the presently examined application;
(C) Determining the level of ordinary skill in the pertinent art; and
(D) Evaluating any objective indicia of nonobviousness.
Additionally, in formulating the double patenting rejection, the Examiner will employ the above Graham analysis through a One-Way Obviousness test (whether claim A of the presently examined application would have been obvious given claim B of the alleged conflicting application/patent) or a more stringent Two-Way Obviousness test in which the analysis is furthered in both directions (e.g., would claim A have been obvious given claim B, and would claim B have been obvious given claim A).
It is safe to assume that the One-Way Obviousness test will usually be employed by the Examiner unless a number of factors are all concurrently present ( 1) the presently examined application has an earlier filing date than the alleged conflicting patent; 2) administrative delay by the USPTO; and 3) sufficient record illustrates that the Applicant could not have filed a single application.
Further to the aforementioned factual inquiries, the Examiner is required to provide reasons as to why the rejected claims of the presently examined application are obvious variants of the claims of the alleged conflicting application/patent. However, it must be noted that Examiners will many times simply provide a conclusory assertion such as “Claims 1-5 of the present application are obvious variants of claims 1-5 of Patent No. XYZ” and not provide the proper associated reasoning. Accordingly, when such a situation arises, the Practitioner should traverse the rejection and indicate that the Examiner has not presented a prima facie case by failing to provide the required reasoning for the Obviousness-Type Double Patenting Rejection.
Terminal Disclaimers
The filing of a terminal disclaimer to overcome an Obviousness-Type Double Patenting rejection is quite common. However, there are a few points that need to be realized prior to filing a Terminal Disclaimer, namely: 1) patent term reduction; and 2) patents/applications become tied together to a same assignee (hence, sale of one patent/application requires sale of the tied patent/application to that the same assignee.) Furthermore, once the application issues as a patent, a mistakenly filed Terminal Disclaimer cannot be withdrawn. However, while the Application is still pending, an Applicant may cure the mistake by filing a continuation application to remove an improperly filed Terminal Disclaimer.
Furthermore, prior to filing a Terminal Disclaimer, the Applicant should review the current state of the Application (namely, are there other art-based (102/103) rejections in the outstanding Office Action, or if the Obviousness-Type Double Patenting rejection is the only remaining rejection?) As indicated above repeatedly, the claims form the basis for a Double-Patenting rejection. Thus, if the Applicant will likely amend the claims to overcome an art-based rejection, an Applicant may want to delay the filing of a Terminal Disclaimer as there is a possibility that the scope of the claims may change due to the claim amendment. However, if the Obviousness-Type Double Patenting rejection is the only remaining rejection, filing a Terminal Disclaimer may be appropriate to expedite the receipt of a Notice of Allowance.
For further information regarding Double-Patenting rejections, you are invited to review at least: MPEP 804