How does double patenting differ from prior art rejections?

While double patenting and prior art rejections may seem similar, there are key differences: Double patenting compares claims, while prior art rejections compare claims to disclosures Terminal disclaimers can overcome nonstatutory double patenting but not prior art rejections Double patenting requires some commonality in ownership or inventorship Prior art exceptions may not apply to double…

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How are double patenting issues addressed in multiple reissue applications?

Double patenting issues can arise when multiple reissue applications are filed for the same patent. The MPEP provides guidance on addressing these issues: Where the parent and the continuation reissue applications are examined together, a provisional double patenting rejection should be made in both cases as to any overlapping claims. To resolve these issues, terminal…

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What is the significance of the ‘common ownership’ requirement in terminal disclaimers?

The ‘common ownership’ requirement in terminal disclaimers is crucial for preventing improper timewise extension of patent rights. Key points include: It ensures that the disclaimed patent and the reference patent remain under common ownership for the entire term of the disclaimed patent. This prevents separate entities from enforcing the patents independently, which could effectively extend…

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How does common ownership affect double patenting rejections?

Common ownership plays a significant role in double patenting rejections: Double patenting can occur between applications/patents with the same inventive entity, at least one common inventor, or common ownership Common ownership can be used to disqualify a reference as prior art under certain conditions For nonstatutory double patenting, a terminal disclaimer requires common ownership of…

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Can a recorded terminal disclaimer be withdrawn?

A recorded terminal disclaimer may be withdrawn before the application issues as a patent or before a reexamination certificate issues. However, after a patent or reexamination certificate issues, a recorded terminal disclaimer will not be nullified. The MPEP states: If timely requested, a recorded terminal disclaimer may be withdrawn before the application in which it…

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Can the requirement for a terminal disclaimer in a revival petition be waived?

The requirement for a terminal disclaimer in a revival petition can potentially be waived, but only in extraordinary circumstances. Key points: Applicants can file a petition under 37 CFR 1.183 requesting waiver of the terminal disclaimer requirement The petition must show an ‘extraordinary situation’ where ‘justice requires’ the requested relief An example of a situation…

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What is the role of terminal disclaimers in overcoming rejections under MPEP 715.05?

MPEP 715.05 discusses the use of terminal disclaimers in conjunction with affidavits or declarations to overcome certain rejections. Specifically: “Where the reference and the application or patent under reexamination are commonly owned, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the reference are not…

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What is the impact of a terminal disclaimer on an abandoned application?

A terminal disclaimer can have significant implications for an abandoned application. The MPEP 711.02(b) provides guidance on this matter: The mere existence of a recorded terminal disclaimer filed to obviate a double patenting rejection does not preclude an application from becoming abandoned for failure to reply to an Office action. The establishment of the terminal…

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