Double Patenting

By Lia Kopin-Green
/
September 1, 2022

What is Double Patenting?

Double patenting is the granting of multiple patents for a single invention in the same region. In the United States, intellectual property laws prohibit an invention from being claimed twice. If there is more than one pending patent application for one invention, it is typically grounds for rejection of the application last filed to the United States Patent and Trademark Office (USPTO). Double patenting rejections may occur as a result of improper handling of paperwork or applications. In addition, these rejections are often issued if a continuation or divisional application is identical or very similar to the parent application that was previously filed.

Double patenting laws came into play since patent owners were attempting to submit identical or nearly identical applications to make their patents last longer. Although the USPTO is strict against double patenting, there are other ways to extend the lifespan of your patent, like through a Patent Term Adjustment (PTA)

Key Takeaways

  • Double patenting occurs when there is more than one patent covering a single invention in the same region.
  • According to US law, a single invention can only be claimed once.
  • Divisional or continuation patent applications may be rejected if they are identical to the parent application, resulting in double patenting.

Statutory vs Non-statutory Double Patenting Rejections

There are two main types of double patenting rejections: statutory rejections and non-statutory rejections.

Statutory double patenting rejections, also known as same-invention double patenting rejections, are often issued when two claims are identical in scope. This may happen as a result of a mistake in paperwork or applications by the patent attorney or applicant. Additionally, the USPTO may issue a statutory double patenting rejection if a continuation or divisional application is the same or nearly the same as the parent application. In these cases, you may be given the option to reword your application.

On the other hand, non-statutory double patenting rejections, which are also known as obviousness-type double patenting rejections, are served when a patent application is nearly identical to the claims of another unrelated patent application. In these cases, the language of the two applications does not need to be “word for word” identical. Non-statutory rejections prevent applicants from acquiring a patent term extension by claiming a later filing date with a continuation or divisional application. These rejections are often addressed by submitting a standard terminal disclaimer form to the USPTO. This form limits the patent by stating that it will expire as soon as the first patent expires, so the filing date will not be extended.

Bottom Line

Has your patent application been rejected due to a double patenting issue? Do you need to submit a terminal disclaimer form and you don’t know where to start? It is important that you approach these matters with appropriate legal representation. Head to our Intellectual Property Attorneys page to find the right IP lawyer for you.

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