DOUBLE PATENTING REJECTIONS

DOUBLE PATENTING REJECTIONS

What do they mean?


Many Applicants are confused by the concept of "Double Patenting". Don't feel ashamed. Many Attorneys and even Patent Examiners don't fully understand the implications of it either.


1. The Basic Concept

As the name implies, a Double Patenting Rejection is designed to prevent an inventor from obtaining two Patents on the same invention. In the far distant past, some inventor were able to (or tried to) extend their Patent monopolies by obtaining multiple Patents on the same invention – either by accident or by intention.

If the later Patent had a later expiration date (and in the old days, Patents extended 17 years from the date of issue not 20 years from filing) then an inventor could conceivably "extend" his Patent term by filing multiple applications on the same or similar invention, with the Patents having different expiration dates.

Clearly such a technique would be impermissible, and the law reflects that. You cannot get two Patents on the same invention, period. But what about similar inventions? That's where it gets tricky.

Thus, we have two types of Double Patenting Rejections – "Anticipation" type and "Obviousness" type. As we shall see the two are quite different. One is essentially fatal to Patentability, while the other is a minor annoyance.


2. Anticipation or 102-type (Statutory) Double-Patenting

If two Patent Applications were filed by the same inventor or inventors, and had the same disclosure and claims, this clearly would be an example of Anticipation-type Double Patenting. In other words, Two applications exist for the same invention – word for word. The later-filed application is "anticipated" by the earlier one. This is similar to a 102-type rejection, where every feature of a claimed invention is shown in the Prior Art.

This type of rejection is also referred to as a Statutory Double-Patenting Rejection, as the basis for this rejection is written into the law.

If such is really the case, there is not much that can be done. You can't get two Patents on the same invention, period. But such is rarely the case. Usually, an inventor has filed two applications on similar aspects of an invention, and the disclosures and more importantly the claims are not word-for word.

In such a scenario, it might be possible to argue the rejection with the Examiner by pointing out that the claims are different in scope. Under the doctrine of claim differentiation, every word in a claim counts, and two claims that contain even one word different from another are arguably distinct from one another, at least in terms of anticipation.

Many Examiners fall into the trap of making an Anticipation-type rejection. I say trap, as once the Examiner makes such a rejection, the applicant's back is to the wall, and they have no choice but to fight the rejection. It is far easier for the Examiner to make an Obviousness-type Double-Patenting Rejection, as the Applicant can easily overcome this with a Terminal Disclaimer and the Examiner gets a "counter" toward his production quota.

A Terminal Disclaimer will NOT, however, overcome a Statutory Double Patenting Rejection. So as an Examiner, you should avoid making them, unless truly necessary.


3. Obviousness or 103-type (Non-Statutory) Double-Patenting

As the name implies, this kind of rejection is made when two Patent Applications by the same inventor(s) claim inventions that are similar, but not identical. In other words, the later application is obvious in view of the earlier one. This is similar to a 103-type (obviousness) rejection where a claim is rejected in view of a combination of Prior Art references or is deemed "obvious" in view of the Prior Art.

There is no Statutory Law for this rejection. It is sometimes referred to as the Judicially Created Doctrine of Obviousness-Type Double Patenting, which has a nice sound and rolls off the tongue. The Patent Office as of late, however, has referred to this as Non-Statutory Double-Patenting, just to keep things simple.

Of the two types of rejections, this is by far the kinder of the two. One can easily overcome this rejection by signing a Terminal Disclaimer and the claims (unless rejected on other grounds) would be allowable. In 95% of the cases I have seen, usually the client is best advised to sign the Terminal Disclaimer and allow the application to issue.

So what is a Terminal Disclaimer? And what does it do? I'm glad you asked.

4. Terminal Disclaimer

In order to prevent an applicant from extending his Patent Monopoly forever, the Patent Office allows an applicant to sign a document known as a Terminal Disclaimer. This document basically says that the applicant will disclaim any portion of the Patent term that extends beyond the term of the earlier-filed application.

It seems like a simple concept. The Patent Office doesn't want people trying to extend their Patent Monopolies. So the Applicant disclaims that portion of the term, and everyone is happy. Applicant gets claims to other aspects of his invention, the Patent Office protects the public interest, and everyone knows that the Patent Monopoly will not be extended.

What could be simpler? Well, it can get complicated.

But first, the basic mechanics of it: In order to file the Terminal Disclaimer, both applications must be commonly owned. So check your Assignment documents and/or make sure the inventorship is the same on both cases. Today, an Attorney can sign a Terminal Disclaimer on behalf of a client, so the complexities of getting signatures from Officers of the Company have at least been removed.


4. Common Ownership

This seems like a perfectly simple thing. Either the inventors are the owners, and the inventorship is the same for both applications, or both applications have been assigned to the same company.

But there is one trick. Once the Terminal Disclaimer is signed, ownership of the two Patents has to REMAIN the same for the life of the Patent. If one Patent is sold to Company A and the other sold to Company B, one or both Patents may now be unenforcable.

See: 774 F.2d 483 (227 U.S.P.Q. 439, 227U.S.P.Q. 779,4) Fed. Cir. MERCK & CO., INC., Petitioner,v.U.S. INTERNATIONAL TRADE COMMISSION, et al., Respondents. Appeal No. 85-1277. United States Court of Appeals,Federal Circuit.
Oct. 9, 1985.

"The provision in the terminal disclaimer that the '284 patent would "expire immediately" if it ceased to be commonly owned with the other four patents conformed to the requirements of the Patent and Trademark Office that were in effect when the disclaimer was filed. Commissioner's Notice, 848 O.G. 1 (Feb. 14, 1968). See generally In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982). An amendment to 37 C.F.R. Sec. 1.321 (1971), effective April 30, 1971, changed this requirement to provide that disclaimers need state only that the patent be unenforceable during the period it is not commonly owned with the other patents recited in the disclaimer. This amendment was publicly proposed at 35 Fed.Reg. 20,012 (1970) and published at 36 Fed.Reg. 7312 (1971), both before the date on which the '284 patent issued. Sumitomo, however, never attempted to have the language of its disclaimer changed to incorporate this new and less severe standard."

Before 1971, when the Rules were changed, the situation was even more dire. If both Patents were not commonly owned at all times, they would instantly expire, with no recourse to revive the applications. Thus, if two Patents were assigned to the same company, but a day apart, one or both Patents would expire. This was an unduly harsh and extreme measure.

With a rule change in 1971, terminal disclaimers were made somewhat less harsh. Today they are not enforcable if not commonly owned. However, this can be corrected by assigning the Patents to a common owner. Thus, if two Patents are assigned to the same company, but a day apart, then the two Patents may not be enforcable for that one day they are not commonly owned.

So, if a Terminal Disclaimer is signed, be sure to keep that in mind if you sell all or part of your portfolio. If the person purchasing your Patent Portfolio does a due diligence process, they should discover whether any such Patents are linked together.


5. Provisional versus Actual Rejections

It gets a little trickier in another way as well. A Double-Patenting Rejection (both kinds) can be made between an Application and an issued Patent, or an Application and another co-pending Application. In this instance, the term "Provisional" has nothing to do with Provisional Patent Applications.

As the name implies, if an Application is rejected in view of another Application, the rejection is considered Provisional, as the other Application has not issued. If the co-pending application does not issue as a Patent, the issue is moot, and any Terminal Disclaimer filed has no effect.

If the rejection is Actual, then the Terminal Disclaimer is effective and the termination of the present application is based on the expiration date of the issued Patent that the rejection was based upon.


6. Maintenance Fees

One area overlooked by some applicants is maintenance fees. If you forget to pay a maintenance fee on a Patent, and it expires or you intentionally let it expire by not paying the maintenance fee, then the second Patent with the Terminal Disclaimer may expire as well.


7. Patent Term

As noted above, in the olden days, a Patent term was 17 years from the date of issue. Thus, if you filed a second application 10 years into the term of the first Patent, you could effectively extend your Patent term, if they allowed Double-Patenting.

However, with the Terminal Disclaimer, the term of the second application would be truncated to the termination of the first Patent, or 17 years from the date of issue of that Patent.

In recent years, however, we now have Patent terms measured from the date of filing: 20 years from the date of filing (of the earliest application in a series) in most instances. (Patent Terms may be adjusted by months, or even years, to compensate for delays caused by the Patent Office, further confusing things).

In some instances, I have been chagrined to be given a Non-Statutory Double Patenting Rejection in view of an earlier Patent or Application from which the rejected case claims Priority (as a Continuation or Continuation-In-Part, for example). Under the new law, the later filed case will have a 20 year term from the date of the earlier case anyway, so it does not seem to make any sense to raise the Double-Patenting rejection in the first place, as a Terminal Disclaimer would be a nullity.

Not quite, as it turns out. As noted above, if the maintenance fees are not paid in the Parent Patent, the "child" Patent would still be in force, if a Terminal Disclaimer is not filed. So, to cover this unusual circumstance, a Terminal Disclaimer is required.

This scenario illustrates how little is being given up, in many instances, by submitting a Terminal Disclaimer. If the Patent term is going to be 20 years from the date of the earlier filed Application anyway, filing a Terminal Disclaimer causes no real harm (arguably).

8. Fighting a Double-Patenting Rejection

For a Statutory (Anticipation) type Double Patenting Rejection, your choice is really only to fight (or abandon the application. Arguing a Double-Patenting rejection can be tricky, as you are basically arguing against your own "Art". The trick is to illustrate how the claims differ from one another, without disparaging the other application.

The most realistic goal, in many cases, is to get the Examiner to change the Statutory type Double Patenting Rejection to a Non-Statutory type, the latter of which can be overcome by Terminal Disclaimer. In that vein, I usually argue the doctrine of claim differentiation to show that the claims do not in fact cover the same subject matter.

However, in doing so, you arguably create file wrapper estoppel. Granted, this may be necessary to allow the case. But in general, we try to avoid saying on the record what we think the claims mean, as this may limit other interpretations later down the road. An Examiner Interview is often helpful in persuading the Examiner to change the rejection type.

Arguing a Non-Statutory Double-Patenting Rejection is not only fruitless, it may be dangerous as well. This type of rejection can be easily overcome with a Terminal Disclaimer, which leaves little if anything on the record with regard to claim interpretation. Arguing that two similar inventions are Patentably Distinct will likely fall on deaf ears with the Examiner, but a Judge will parse your arguments later on in Court for estoppel issues. I can think of few instances where it is truly worthwhile to argue these types of rejections.



9. Restriction or Election Requirements

One additional complexity in Double Patenting is the issue of Restriction or Election of Species Requirements (see my article on this subject). In some instances, an Examiner may force you to "chop up" a Patent Application into a series of smaller Applications known as Divisional Patent Applications.

In this instance, the Examiner is not supposed to make a Double-Patenting Rejection or Obviousness-Type Double Patenting Rejection. Think about it: In the Restriction Requirement, the Examiner is arguing the two inventions are patentably distinct. In the Double-Patenting Rejection, the Examiner is arguing now that the cases are indistinct from one another.

This is one instance where it may be worthwhile to argue the rejection. But again, since the cases will have the same Patent term anyway (based on a common filing date), the point is often moot.



10. Conclusion

In most cases, an Examiner raises an Obviousness-type (Non-Statutory) Double Patenting Rejection, and the best course of action is to sign a Terminal Disclaimer. In a few instances, the Examiner may make an Anticipation –type (Statutory) rejection, in which case the best course of action is usually to persuade the Examiner to change this to the Non-Statutory type.

Just keep in mind that the applications need to be commonly owned, and should remain commonly owned, and that the Maintenance Fees on both cases need to be paid to keep both in force.

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