What are the implications of rejoinder for double patenting?
Rejoinder can have significant implications for double patenting issues in patent applications. MPEP 821.04 states:
“Any claim(s) presented in a divisional application that are anticipated by, or rendered obvious over, the claims of the parent application may be subject to a double patenting rejection when the restriction requirement is withdrawn in the parent application.”
Key points about rejoinder and double patenting:
- Withdrawal of a restriction requirement can negate the safe harbor provision of 35 U.S.C. 121
- Claims in a divisional application may be subject to double patenting rejections after rejoinder
- Applicants may need to file a terminal disclaimer to overcome double patenting rejections
The MPEP further notes: “Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable.” This means that the protection against double patenting provided by filing a divisional application may no longer apply after rejoinder.
Applicants should carefully consider the potential for double patenting issues when pursuing rejoinder and may need to develop strategies to address these issues, such as filing terminal disclaimers when appropriate.
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