Philip Vales Review | Patent CEO

Double Patenting | Obviousness Type & More

The Patent System was set up to promote the technical arts by providing inventors with a monopoly on their inventions for a limited period of time.  Today, an inventor retains a blanket protection in the USA for 20 years from the filing date of an application.  However, certain situations develop when applicants file applications with identical or similar claims to patentable subject matter.  As a result, the patent office responds with a double patenting rejection because to permit these type of claims would unlawfully extend a patent term and defeat the purpose of having a patent with a limited life span.  Generally, if you want a never ending monopoly try a Trade Secret (coca-cola formula for example) and DON’T disclose it; however, if you believe someone else would invent the concept you must pursue patent protection.

When you file a patent application the USPTO (the United States Patent & Trademark Office) tries to limit your options so that a patent issues on one concept at a time in any given application not only because of the statute but also because of the practical realities involved with an ever expanding application.  To understand why they do this, Imagine what would happen if the patent office let you include any number of inventions in a single application.  People would combine unrelated ideas into one giant application in order to save money or include various related inventions into a gigantic document.

As a result, this would place a great burden on the government agency and ultimately means that the patent examiner would necessarily have to examine the contents of enormous applications containing an over abundance of drawings and written material.  Once ascertaining the meaning of this specification he or she would turn to analyzing the claims based thereon and find various independent claims directed to unrelated or somewhat related inventions.  Your patent attorney can deal with all of these issues as theses issues are sometimes quite complex.

Restriction Requirement

What this boils down to is that the examiner would have an undue burden to search multiple inventions across many search classes / sub-classes and the applicant would get much more for his money than would be permissible.  Thus, the USPTO would issue a Restriction Requirement; consequently, the Director in the USPTO Technology Center informs the applicant that the application has two or more independent and distinct inventions and that an Election must be made as to which of the inventions is to be examined and which is to be set aside.  An applicant would then respond with appropriate arguments attempting to traverse it or simply accept (without traverse) the decision as a fait acompli.  Assuming that the restriction requirement is maintained the applicant has the option of pursuing the benefit of the non elected invention using another application claiming the priority benefit of the previously filed application.

Divisional Application

This other application is known as a Divisional Application.  Presuming that the divisional complies with the written description requirements and enabling requirements of the USPTO statute 35 USC 112

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. “

and that it complies with the requirement  for receiving the benefit of an early filing date in the US 35 USC 120 then the divisional application ‘can be back dated’ so to speak to the originally filed application having the multiple inventions.  It should be noted that a patent that has been issued as a result of the requirement or from an application originating therefrom can not be used against the original filing, the divisional application or resulting patents therefrom.  The only caveat here is that the divisional application must be filed before the issuance of the original application.  It should be understood that this blanket protection applies to issues within the jurisdiction of the USPTO itself or in the US court system.  As a final detail, the value of any patent can not be interrogated based upon the supposed lack of a restriction that should have been allegedly made by the PTO; this protects an issued patent from being challenged on validity because of the argument that it should be two or more patents not just one which is a particularly specious argument because if the claims are good then the patent should be good.

Statutory Double Patenting

There are two types of Double Patenting rejections an inventor can be hit with, these are namely, Statutory and Non-Statutory.  The Statutory rejection implies that the scope of the invention described in the claim is identical to the other one.  We have already discussed some generalities relating to the reasons behind the concept of double patenting; however, we have not specifically described the law to which it pertains This law, 35 USC 101 requires that an inventor may obtain “A” patent singular mind you!

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Yes there it is!!  The entire reason that inventors and corporations have to go through restrictions, elections, multiple applications as well as expanding government and legal fees.  The DREADED letter A!  Who knows what will happen once we get into the F let alone all the way to W!  Thus, one can only obtain a single patent on a single invention; of course, if you try to obtain multiple patents on the same invention then you will receive a statutory double patenting rejection.  On the other hand, if you have two or more inventions in a single patent application then these extra inventions must be restricted out as discussed above.

In order to overcome a rejection based upon statutory double patenting, a simple disclaimer of rights beyond the term of an original patent document DOES NOT SUFFICE, an applicant has only two options available:

  • Amend the claim(s) so as to work around the rejection
  • Cancellation of any offending claim(s) also works well

A disclaimer of patent rights beyond a certain time frame works with a certain type of rejection known as an Obviousness Type Double Patenting Rejection discussed more fully below.

Obviousness Type Double Patenting

One type of Non-Statutory rejection is known as an obviousness double patenting rejection; this type is issued by an examiner and informs you of various things.  First, he or she is stating that upon performing a review of the claim terminology in the conflicting application or patent and the claim at issue, a finding was made of the scope and content of the claims therein. Next he or she ascertained the differences between the subject claim and the conflicting claims in the patent or application.  Once accomplished, it was determined that a resolution of the level of ordinary skill in that technology, rendered the subject claim obvious in the light thereof.  What this means is yes there are differences between the two but the differences are ‘obvious’ modifications based upon logical reasoning, other existing prior art and so forth.

This is highly similar to a regular obviousness rejection under 35 USC 103 whereby the claims are examined for their broadest reasonable interpretation (observe these loaded words – they can be twisted any which way) in light of the disclosed specification.  Then the differences there between are determined and an obviousness rejection is made based upon the level of ordinary skill in the art.

Continuing the review of non-statutory double patenting, it should be known that an obviousness double patenting rejection can be overcome in several ways:

  • Amend the claim(s) so as to work around the rejection
  • Cancellation of any offending claim(s) also works well
  • Filing of a Terminal Disclaimer extinguishing any time beyond the end of the first document.  Thus, the applicant is not attempting to evade patent law by extending a patent term beyond the statutory limits.

There are times however, that the examined claim and the conflicting claims are different, yet an obviousness double patent rejection is not appropriate.

Anticipation Analysis

In this situation. there is different subject matter however, the same is not patentably distinct from the claims found within another pre-existing patent or application.  Therefore, the subject claim is generic to a prior species or sub genus claimed in another application or patent.  In other words, the prior claims fall completely within the scope of the subject claim but the claims are different.  Thus, if the subject claim issues there would be an illegal extension of the time of the prior application or patent since the it would contain matter within the other art.

If you find all of this confusing consider using a miami patent attorney