How can I overcome a nonstatutory double patenting rejection?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

To overcome a nonstatutory double patenting rejection, you can file a terminal disclaimer. The MPEP states: A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application.

However, it’s important to note that filing a terminal disclaimer alone is not sufficient. The MPEP clarifies: The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action.

You can file a terminal disclaimer using the USPTO’s web-based eTerminal Disclaimer system, which provides immediate processing upon meeting all requirements.