What situations are not protected by the 35 U.S.C. 121 prohibition against nonstatutory double patenting rejections?

The MPEP outlines several situations where the prohibition against nonstatutory double patenting rejections under 35 U.S.C. 121 does not apply:

• When the applicant voluntarily files two or more applications without a restriction requirement by the examiner
• When the claims are not consonant with the original restriction requirement
• When the restriction requirement was withdrawn due to the allowance of generic or linking claims
• When the restriction requirement was made only in an international application by the International Searching Authority or the International Preliminary Examining Authority
• When the restriction requirement was withdrawn entirely before the patent issues
• When the claims of the second application are drawn to the “same invention” as the first application or patent
• In certain situations involving product and process claims when the product is subsequently allowed
• When the second application is a continuation-in-part (CIP) that includes claims restricted from the original application

It’s important to note that “35 U.S.C. 121 refers specifically and only to divisional and original applications, and does not afford protection to CIP applications.“

To learn more:

• 35 U.S.C. 121
• nonstatutory double patenting
• exceptions
• continuation-in-part