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Home > Nanotechnology Columns > Magda Carvalho PhD, JD > Non-statutory obviousness-type double patenting

Magda Carvalho
Patent Attorney
Patent Law at M. Carvalho

Non-statutory obviousness-type double patenting was judicially created to remove the unjust extension of patent rights beyond the 20 year monopoly. This type of rejection is overcome by a Terminal Disclaimer as seen in a case before the BPAI about an invention directed to nanofabrication of ferritin.

April 14th, 2011

Non-statutory obviousness-type double patenting

Double patenting involves two or more patents or patent applications sharing one common inventor and/or be either commonly assigned/owned or non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 103 (c)(2) and (3) pursuant to the CREATE Act (Pub. L. 108-453, 118 Stat. 3596 (2004)). During the examination of a patent application, the double patenting cases result in either an actual rejection or a provisional rejection. A provisional rejection arises when the conflicting reference has not issued as in the case of a co-pending patent application or a published patent application. An actual rejection occurs in view of another issued patent.

In non-statutory type double patenting rejection the claimed inventions are not identical but the later application is an obvious modification in view of the earlier one. It would be an obvious variation to the person skilled in the art. A single patentee or entity cannot have a monopoly for 20 year over its invention, and then prolong its monopoly by making an obvious modification on a separate patent. Such extension of a patent term harms the public. A Terminal Disclaimer easily overcomes this type of rejection since it provides that the termination of monopoly of the examined application is based on the expiration date of the issued patent that the rejection was based upon.

Since the doctrine of double patenting seeks to remove unjustly extending patent rights which are against public policy, the focus of double patenting analysis is on the claims in all the patents or patent applications at issue. As such, using the Specification of the allegedly disputed patent or application is not allowed with some exceptions. The exceptions include searching for claim terminology using the dictionary and seek support for the claims using the disclosure in the allegedly conflicting patent or application.

The obviousness analysis follows the 35 U.S.C. 103 scrutinies: (1) determine the scope and content of the "prior art," (2) ascertain the differences between the "prior art" and the claim at issue, (3) resolve the level of ordinary skill in the art, and (4) weight in evidence of secondary considerations. In addition, the examiner should make the rejection clear regarding the differences between a claim in the examined application compared to a claim in the reference patent or application.

In Ex parte Matsui and Matsukawa, Appeal No. 2011-001656 (BPAI 03/25/2011) one of the issues on appeal involved a provisional rejection of claim 1 on the ground of non-statutory obviousness-type double patenting. The invention was directed to methods of nanofabrication using ferritin. Specifically, it was related to a method of two-dimensionally arraying ferritin on a substrate covered with SiO2. Ferritin is an intracellular protein that stores iron and releases it. Ferritin is present in almost all living organisms. In humans, it defends against iron deficiency and iron overload. Ferritin is a protein that can form a two-dimensional crystal in cooperation with a peptide capable of binding to nano-structures.

On appeal Appellants asserted in their Reply Brief that they had filed a Terminal Disclaimer which has been approved, "disclaiming the terminal part of the statutory term on any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number 11/952,609."

The Board reversed the rejection on the grounds that the Examiner failed to acknowledge the existence of such Terminal Disclaimer. The Board pointed out that the Examiner failed to (1) identify a deficiency in the Terminal Disclaimer and (2) explain why the Administrative Record incorrectly approved the Terminal Disclaimer.

In summary, one can easily overcome a non-statutory double type patenting rejection by submitting a Terminal Disclaimer. This legal document ensures that the term for a patent granted on the later application will not extend past the expiration of the term of the earlier patent or a patent granted on a conflicting application. If the rejection is provisional, the co-pending conflicting patent application does not mature as a patent, then the issue is said moot, and any Terminal Disclaimer filed in the later patent has no effect. However, if the rejection is actual, then the Terminal Disclaimer is effective. Other ways to overcome this type of rejection include canceling or amending the claim(s). However, Declarations under 37 CFR 1.131 are not sufficient to overcome this type of rejection

Please send your comments to Magda Carvalho at

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