Terminal Disclaimer Double Patenting: Everything You Need to Know
Terminal disclaimer double patenting pertains to the issue of two similar patents in an application. 3 min read
Terminal Disclaimer Double Patenting
Terminal disclaimer double patenting pertains to the issue of two similar patents in an application. Patent claims pertain to the scope of protection that a patent provides. The Patent Statute secures an issuance of two patents that are commonly owned containing claims for an identical invention, otherwise known as same-invention double patenting. The courts have established a second double patenting type.
When a claim of a single patent is an apparent variation of another, and an owner retains ownership over both patents, the second patent is rendered invalid because it is an “obvious-type double patenting." The double patenting type precludes an issuance of double patents for the same inventions and stems from Section 101 via the Patent Statute, stating that an inventor may get a patent for any of the invention categories.
Such language has been used as an absolute standard regarding the issuance of another patent for the same invention. To determine if a second patent is for the same invention or a first one, you should assess if there are patent claims that would cross-read. This would mean that if a claim for a first patent is the same as a claim of the second one, then no patent would violate a single claim without violating the other. If this is the case, the second patent issuance would be invalid because of same-invention double patenting.
Double Patent Issue
An issue of double patents could take place after or before patents have been issued. Moreover, it could be raised during pendency of all applications or after a single patent has been approved.
- Note: The Patent and Trademark Office Examiner could provide a provisional double patenting rejection of a single or several claims of patent.
In addition, applicants responding to rejections could avoid the rejection by adjusting claims to not cover the same inventions. In an obvious-type double patenting, the first application or patent has a minimum of one claim, and though it is not the same as a claim of the second application or patent, is an apparent variation that could not be patented. In such a scenario, there is no effort in patenting the same invention in two different patents.
The potential drawback is that such claims where there are apparent variations of one another in two different patents, the first patent’s expiration results in an appropriate extension of the patent rights because of an unexpired second patent.
The obvious-type double patent objection could be defeated through the filing of what’s called a terminal disclaimer. This is a statement by an owner noting that an owner has disclaimed the time of the second patent that would be issued and would extend past the exploration of the first patent. Therefore, the terminal disclaimer gets around double patenting objections, so long as such patents are owned commonly.
- Note: Double patenting takes place despite an inventor that’s named in each application.
With that, if two patent applications that are owned by separate parties claim ownership over the same invention, the application may become mired in an interference proceeding. In such a case, the Patent and Trademark Office would ask for proof of which invention party completed the invention first and would grant the claim to the party who finished it first. Under such cases, an interference can take place between a patent that’s already issued and an application that’s pending.
For other scenarios involving differing parties owning applications or patents that claim obvious, but not the same invention, the effective dates would be assessed. The one with the latest effective date would be rendered invalid based on prior art precedent rather than double patenting.
The one exception to the rejection of double patenting surrounds the Patent and Trademarks Office’s right in entering what’s called a restriction requirement within patent applications. This occurs when two or more distinct and independent inventions face claims in patent applications. If this happens, the applicant must go after a single claim group directed after a sole invention.
Therefore, the claims do not get elected and can be assessed via a divisional application, which entails filing various documents with the Patent and Trademark Office and paying additional fees. The office would then open another file for another application.
To learn more about terminal disclaimer double patenting, you can post your job on UpCounsel’s website. UpCounsel’s lawyers will provide more information on your rights as an inventor and patent holder and how you can legally protect your inventions. Moreover, they will defend your rights in court if another party violates your invention or patent rights.