How does the prohibition against double patenting apply in cases of restriction requirements?

The prohibition against double patenting under 35 U.S.C. 121 is an important consideration in cases involving restriction requirements. However, there is a specific exception related to withdrawn restriction requirements. According to MPEP 806.05(h), which cites Form Paragraph 8.21.04:

“Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.”

This means:

• The prohibition against double patenting normally applies to divisional applications resulting from restriction requirements.
• However, if the examiner withdraws the restriction requirement before the patent issues, the prohibition does not apply.
• In such cases, double patenting rejections may still be made if appropriate.

This exception ensures that applicants cannot unfairly benefit from the safe harbor provision of 35 U.S.C. 121 when the restriction requirement is no longer in effect.

To learn more:

• double patenting
• restriction requirements
• 35 U.S.C. 121
• patent examination