Can double patenting rejections be made in ex parte reexamination?

Can double patenting rejections be made in ex parte reexamination? Yes, double patenting rejections can be made in ex parte reexamination, but with specific conditions: Double patenting rejections are permitted if they are based on patents or printed publications. These rejections must raise a substantial new question of patentability. The MPEP 2258 states: “Double patenting…

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What is double patenting?

Double patenting is a judicial doctrine that prevents the unjustified extension of patent exclusivity beyond the term of a patent. There are two types of double patenting rejections: Statutory double patenting under 35 U.S.C. 101, which prohibits claiming the same invention twice Nonstatutory double patenting, which is based on a judicially created doctrine to prevent…

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How does the USPTO handle species and genus claims in separate applications?

The USPTO has specific guidelines for handling species and genus claims in separate applications. According to MPEP 822, examiners are directed to “See MPEP § 806.04(h) to § 806.04(i) for species and genus in separate applications.” Key points about handling species and genus claims in separate applications include: Species claims are more specific embodiments of…

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How does the USPTO handle applications with different inventors but common assignees?

The USPTO has specific procedures for handling applications with different inventors but common assignees, especially when dealing with potentially overlapping inventions. MPEP 817 provides guidance on this issue, particularly in the context of the First Inventor to File (FITF) provisions of the America Invents Act (AIA). Form Paragraph 8.28.aia addresses situations where inventions are not…

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What is a terminal disclaimer?

A terminal disclaimer is a statement filed by a patent applicant or owner that disclaims or dedicates to the public the entire term or any terminal part of the term of a patent or patent to be granted. It is typically used to overcome nonstatutory double patenting rejections. The MPEP states: A terminal disclaimer is…

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How do terminal disclaimers affect reissue patents?

How do terminal disclaimers affect reissue patents? Terminal disclaimers filed for the original patent continue to apply to reissue patents. According to MPEP 1405: “Any terminal disclaimer filed in the original patent carries over to the reissue. This is because the reissue patent is for the same invention as that of the original patent and…

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How are terminal disclaimers handled in the Notice of Allowance process?

Terminal disclaimers are an important consideration in the Notice of Allowance process. The MPEP 1303 provides guidance on how these are handled: “If a terminal disclaimer has been filed in the application, the examiner should ensure that the terminal disclaimer has been properly recorded.” The process for handling terminal disclaimers includes: The examiner verifies that…

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What is a terminal disclaimer in patent law?

A terminal disclaimer is a legal document filed by a patent applicant or owner to overcome a double patenting rejection. It typically: Disclaims the terminal part of the statutory term of a later-filed patent that would extend beyond the expiration date of an earlier-filed patent Agrees that the later-filed patent shall be enforceable only for…

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