Double Patenting Rejection

A double patenting rejection is a USPTO rejection that prevents an applicant from obtaining two patents with claims that are the same or are not patentably distinct from each other. The policy rationale: a patent gives the patent holder a time-limited exclusive right; double patenting would allow the patentee to effectively extend the patent term by obtaining a second patent on the same or obvious variants of the claimed invention — a practice called 'unjust extension of the right to exclude.' There are two distinct types of double patenting rejection: (1) STATUTORY DOUBLE PATENTING (same invention type): based on 35 U.S.C. § 101, which provides that a person 'may obtain a patent' — the word 'a' (singular) prohibits two patents on the exact same invention; the claims in two applications must be directed to the exact same invention; cannot be overcome by terminal disclaimer — the applicant must amend or cancel the duplicate claims; RARE in practice because duplicate identical claims are uncommon in properly drafted applications. (2) OBVIOUSNESS-TYPE DOUBLE PATENTING (ODP): a judicially created doctrine (not in the statute) that prevents two patents on claims that are 'patentably indistinct' — meaning the claims of one patent would be obvious in view of the claims of the other; the most common type of double patenting rejection; CAN be overcome by filing a terminal disclaimer.

Obviousness-type double patenting (ODP) is the most frequent form of double patenting rejection. The ODP test: claims in Application B are rejected under ODP if they would be obvious in view of claims in an already-issued Patent A (or co-pending Application A with the same inventive entity or assignee) AND there is no two-way obviousness (Application A's claims would also be obvious in view of Application B's claims). KEY ELEMENTS: (1) SAME INVENTIVE ENTITY OR COMMON OWNERSHIP — ODP typically requires the same inventive entity (at least one common inventor) or, under current USPTO guidance after PatentClaims.com v. Matal (Fed. Cir. 2018), same assignee; (2) PATENTABLY INDISTINCT CLAIMS — one set of claims would be an obvious variation of the other; tested using the same Graham v. Deere framework as obviousness, but applied claim-to-claim rather than invention-to-prior-art; (3) WHY ODP EXISTS: without ODP, a patentee could file continuation applications and receive additional patents on obvious variants, effectively extending the patent term beyond the 20 years allowed for any single patent family; ODP prevents this unjust extension. ODP APPLIES TO CONTINUATION FAMILIES: ODP rejections most frequently arise in continuation, divisional, and continuation-in-part application families where multiple related applications are pending simultaneously.

A terminal disclaimer (TD) is a legal instrument by which a patentee voluntarily disclaims (gives up) any portion of the patent term that would otherwise extend beyond the expiration date of another patent — specifically, the patent or application that is the basis of the ODP rejection. HOW IT WORKS: (1) The applicant files a terminal disclaimer stating that the patent in the continuation application will expire on the same date as the earlier reference patent (or the earliest expiring patent in the family if there are multiple TDs); (2) The terminal disclaimer also requires that both patents be commonly owned for their entire terms — meaning the continuing patent is unenforceable if it is separated from the reference patent (they must be owned together); (3) Once accepted, the terminal disclaimer overcomes the ODP rejection, and the continuation patent can issue with its otherwise normal term — except that it is disclaimed after the reference patent's expiration date; EFFECT ON PATENT TERM: the continuation patent's enforceable term ends at the same time as the reference patent — the patentee gains no additional patent term from the continuation; however, the continuation may have claims of different scope or cover different embodiments, providing value even with the same expiration. TD AND PATENT TERM ADJUSTMENT (PTA): terminal disclaimer limits the expiration date; if the reference patent's term was shortened by terminal disclaimer, the continuation's term is also capped; PTA awarded to the continuation for USPTO delays may be forfeited if it would extend beyond the terminal disclaimer date — this interplay between PTA and TDs is a critical planning consideration.

Yes — there are substantive responses to ODP rejections beyond just filing a terminal disclaimer: (1) ARGUE PATENTABLE DISTINCTION — argue that the claims ARE patentably distinct; provide a detailed comparison showing that the claimed features are not obvious in view of the reference patent's claims; if the applicant can show that a POSITA would not have been motivated to combine the claim features, or that there are unexpected results, the rejection may be withdrawn; (2) AMEND THE CLAIMS — narrow the claims to create a patentable distinction from the reference patent's claims (useful if the examination has already resulted in a narrower claim scope anyway); (3) APPLICANT DISCLOSURE STATEMENT (ADS) / SHOWING OF DISTINCTNESS — for continuation families, demonstrating that the application's claims are in a different category (apparatus vs. method; different restriction groups) may overcome ODP; (4) RESTRICTION / ELECTION — if the USPTO examiner first restricts the application and then the divisional claims get an ODP rejection from the parent, the ODP rejection should be withdrawn on 'safe harbor' grounds — the restriction requirement forced the divisional filing, so ODP should not apply (35 U.S.C. § 121 safe harbor). PRACTICAL NOTE: for most continuation families, the terminal disclaimer is the simplest and most efficient resolution of an ODP rejection — the cost is low ($200 USPTO fee) and the continuation's distinct claim scope is preserved, just without the extra term.

POST-AIA DOUBLE PATENTING ISSUES: (1) TERMINAL DISCLAIMER AND PTA: if a continuation patent receives Patent Term Adjustment (PTA) for USPTO delays under § 154(b) that would push its expiration beyond the terminal disclaimer date, the PTA may be forfeited to comply with the terminal disclaimer; careful planning around continuation filing dates can minimize this forfeiture; (2) OBVIOUSNESS-TYPE DOUBLE PATENTING WITH PRE-AIA AND POST-AIA MIXED FAMILIES: families with applications having both pre-March 16, 2013 and post-March 16, 2013 effective filing dates can face complex ODP analyses; (3) INTER PARTES REVIEW (IPR) AND ODP: a terminal disclaimer ties two patents together; if one is invalidated in IPR, the other remains valid (they are separately enforceable up to the terminal disclaimer date); but practically, a successful IPR attack on the reference patent expiration date claim scope may affect both patents' commercial value; (4) BOEHRINGER INGELHEIM v. BARR LABS (Fed. Cir. 2009): addressed ODP in the context of multiple related patent families and confirmed that ODP prevents the classic 'evergreening' strategy where a patentee seeks obvious variants to extend exclusivity beyond the 20-year term of the original patent.