Can a double patenting rejection occur between a design patent and a utility patent?
Yes, a double patenting rejection can occur between a design patent and a utility patent. This is known as a design-utility “same invention” double patenting rejection. The MPEP states:
A design – utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims.
However, it’s important to note that when comparing a design patent/application with a utility patent/application:
While there is a direct correlation between the drawings in a design application and the claim, examiners must be aware that no such correlation is necessary in a utility application or patent. Several utility patents may issue with the identical drawing disclosure but with claims directed to different inventions.
Therefore, the examiner must be able to recreate the design claimed from the utility claims without reliance on the drawings when making such a rejection.
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