What is statutory double patenting?
Statutory double patenting is a rejection based on the requirement in 35 U.S.C. 101 that an inventor may obtain only one patent for the same invention. The MPEP explains: “35 U.S.C. 101 requires that whoever invents or discovers an eligible invention may obtain only ONE patent therefor. Thus, it prevents two patents issuing on the…
Read MoreWhat 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…
Read MoreWhat’s the difference between statutory and nonstatutory double patenting?
The main differences between statutory and nonstatutory double patenting are: Statutory double patenting: Based on 35 U.S.C. 171, it applies when identical designs with identical scope are claimed twice. It cannot be overcome by a terminal disclaimer. Nonstatutory double patenting: Based on judicial doctrine, it applies to designs with different appearances or differing scope that…
Read MoreWhat is double patenting in design patents?
Double patenting in design patents refers to two types of rejections: Statutory double patenting: Based on 35 U.S.C. 171, which states an inventor may obtain “a patent” (singular). This prevents issuing two patents for the same design. Nonstatutory double patenting: Based on judicial doctrine to prevent unjustified extension of patent rights and multiple suits against…
Read MoreHow can I avoid a statutory double patenting rejection?
A statutory double patenting rejection can be avoided by: Amending the conflicting claims so that they are not coextensive in scope Canceling the conflicting claims in all pending applications (if the conflicting claims are in one or more pending applications and a patent) Canceling the conflicting claims in all but one of the pending applications…
Read MoreHow does the 35 U.S.C. 121 prohibition affect statutory double patenting rejections?
The 35 U.S.C. 121 prohibition does not affect statutory double patenting rejections. The MPEP clarifies: “The 35 U.S.C. 121 prohibition against certain nonstatutory double patenting rejections does not apply to statutory double patenting rejections under 35 U.S.C. 101 of claims to the ‘same invention.’“ In cases where the claims of the second application are drawn…
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