How does a restriction requirement affect double patenting rejections?
How does a restriction requirement affect double patenting rejections?
A proper restriction requirement can protect against certain double patenting rejections due to the safe harbor provision of 35 U.S.C. 121. According to MPEP 804.01:
“35 U.S.C. 121 prohibits the use of a patent issuing on an application with respect to which a requirement for restriction has been made, or on an application filed as a result of such a requirement, as a reference against a divisional application, if the divisional application is filed before the issuance of the patent.”
This means that when a restriction requirement is made, and a divisional application is properly filed in response:
- The original application (or resulting patent) cannot be used as a reference for a double patenting rejection against the divisional application.
- The divisional application (or resulting patent) cannot be used as a reference for a double patenting rejection against the original application.
However, it’s important to note that this protection only applies to nonstatutory double patenting rejections. Statutory double patenting rejections under 35 U.S.C. 101 are still possible and are not affected by the safe harbor provision.
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