Presumptionofvalidity

Double Patenting is a doctrine primarily concerned with ensuring that Applicants do not unjustly extend a patents term. More specifically, Double patenting arises when multiple applications are filed and each of the applications contain claims including recitations considered the same or similar (Statutory Double Patenting and Obviousness-type Double Patenting, respectively). Accordingly, if an Applicant encounters a Double Patenting rejection in an Office Action, they will typically receive either: 1) a Statutory Double Patenting rejection; or 2) an Obviousness-type Double Patenting Rejection. Further, Double Patenting rejections may involve two or more pending applications (provisional rejection), or one or more pending applications and a patent.

Background

MPEP 804 states, “The doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a patent. The public policy behind this doctrine is that: The public should . . . be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications or variants which would have been obvious to those of ordinary skill in the art at the time the invention was made, taking into account the skill in the art and prior art other than the invention claimed in the issued patent. In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963) (Rich, J., concurring). Double patenting results when the right to exclude granted by a first patent is unjustly extended by the grant of a later issued patent or patents. In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982).”

As stated above, there are two primary types of Double Patenting Rejections (Statutory and Obviousness-Type).

Statutory Double Patenting finds “statutory” support in 35 U.S.C. 101 which requires that a single patent be obtained for a single invention. Further, the MPEP states that “where the claims of an application are substantively the same as those of a first patent, they are barred under 35 U.S.C. 101 – the statutory basis for a double patenting rejection. A rejection based on double patenting of the ’same invention’ type finds its support in the language of 35 U.S.C. 101 which states that ‘whoever invents or discovers any new and useful process … may obtain a patent therefor ….’ Thus, the term ’same invention,’ in this context, means an invention drawn to identical subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).” Accordingly, a proper Statutory Double Patent rejection requires the claims of the related applications to be “the same.”

Additionally, the MPEP advises that “a reliable test for double patenting under 35 U.S.C. 101 is whether a claim in the application could be literally infringed without literally infringing a corresponding claim in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). Is there an embodiment of the invention that falls within the scope of one claim, but not the other? If there is such an embodiment, then identical subject matter is not defined by both claims and statutory double patenting would not exist. For example, the invention defined by a claim reciting a compound having a ‘halogen’ substituent is not identical to or substantively the same as a claim reciting the same compound except having a ‘chlorine’ substituent in place of the halogen because ‘halogen’ is broader than ‘chlorine.’ On the other hand, claims may be differently worded and still define the same invention. Thus, a claim reciting a widget having a length of ‘36 inches’ defines the same invention as a claim reciting the same widget having a length of ‘3 feet.’”

To overcome a Statutory Double Patenting rejection, the Applicant may either argue against the propriety of the rejection or amend the claims as appropriate to thereby change the scope of the claims. However, it is critically important to remember that terminal disclaimers (which are commonly utilized to overcome Obviousness-Type Double Patenting rejections) CANNOT be employed to overcome Statutory Double Patenting rejections. I personally have encountered Statutory Double Patenting rejections on only a few occasions in my years of practice. The majority of Double Patenting rejections (once again based upon my personal experience) generated by the USPTO relate to the second type: Obviousness-type Double Patenting Rejections.

Obviousness-Type Double Patenting (or “non-statutory” Double Patenting) is a judicially created doctrine intended to prevent unjust patent term extensions by prohibiting claims in a second application that are not patentably distinct from claims in a first application/patent. In contrast to Statutory Double Patenting, a Terminal Disclaimer may be filed in response to an Obviousness- Type Double Patenting rejection. Further, in performing an Obviousness-Type Double Patenting analysis, a 35 USC 103 type analysis should be followed.

Strategy

In evaluating a Double Patenting rejection, the Practitioner should firstly ensure that: 1) “two or more patents or applications must have at least one common inventor”; and/or 2) “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).” It is critical to perform this initial review as I have previously encountered (on at least one occasion) an improper Double Patenting rejection which did not satisfy either of the aforementioned requirements.

Next, the Practitioner should ensure that the Examiner has focused upon the claims in furthering their prima facie case. Unlike other art-based rejections (anticipation/obviousness rejections) which employ all portions of a citation (e.g, description, figures, summary, etc.), Double Patenting rejections primarily involve the claims of a related application/patent. Accordingly, it would be improper for an Examiner to cite portions of the description of the related application/patent. However, the Specification of the related application may be used in a few limited circumstances (e.g, to obtain the meaning of claim terms). Accordingly, the Examiner must utilize the claims of the related application/patent in furthering the Double Patenting Rejection (however the teachings of the prior art may be coupled with the claims of a related application/patent in furthering an Obviousness-Type Double Patenting rejection).

Further, for a Statutory Double Patenting rejection the analysis is quite straight forward as all of the features of the claims must be found in the claims of the presently examined application and the alleged conflicting application/patent. However, for an Obviousness-Type Double Patenting rejection, the MPEP indicates that the analysis employed here somewhat similarly parallels the guidelines for a 35 U.S.C. 103(a) rejection, namely the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied in furthering an obviousness analysis under 35 U.S.C. 103. The factual inquiries required by Graham as applied here in an Obviousness-Type Double Patenting analysis include:

(A) Determining the scope and content of a patent claim (of the alleged conflicting application/patent) relative to a claim in the presently examined application;
(B) Determining the differences between the scope and content of the patent claim as determined in (A) and the claim in the presently examined application;
(C) Determining the level of ordinary skill in the pertinent art; and
(D) Evaluating any objective indicia of nonobviousness.

Additionally, in formulating the double patenting rejection, the Examiner will employ the above Graham analysis through a One-Way Obviousness test (whether claim A of the presently examined application would have been obvious given claim B of the alleged conflicting application/patent) or a more stringent Two-Way Obviousness test in which the analysis is furthered in both directions (e.g., would claim A have been obvious given claim B, and would claim B have been obvious given claim A). It is safe to assume that the One-Way Obviousness test will usually be employed by the Examiner unless a number of factors are all concurrently present ( 1) the presently examined application has an earlier filing date than the alleged conflicting patent; 2) administrative delay by the USPTO; and 3) sufficient record illustrates that the Applicant could not have filed a single application.

Further to the aforementioned factual inquiries, the Examiner is required to provide reasons as to why the rejected claims of the presently examined application are obvious variants of the claims of the alleged conflicting application/patent. However, it must be noted that Examiners will many times simply provide a conclusory assertion such as “Claims 1-5 of the present application are obvious variants of claims 1-5 of Patent No. XYZ” and not provide the proper associated reasoning. Accordingly, when such a situation arises, the Practitioner should traverse the rejection and indicate that the Examiner has not presented a prima facie case by failing to provide the required reasoning for the Obviousness-Type Double Patenting Rejection.

Terminal Disclaimers

The filing of a terminal disclaimer to overcome an Obviousness-Type Double Patenting rejection is quite common. However, there are a few points that need to be realized prior to filing a Terminal Disclaimer, namely: 1) patent term reduction; and 2) patents/applications become tied together to a same assignee (hence, sale of one patent/application requires sale of the tied patent/application to that the same assignee.) Furthermore, once the application issues as a patent, a mistakenly filed Terminal Disclaimer cannot be withdrawn. However, while the Application is still pending, an Applicant may cure the mistake by filing a continuation application to remove an improperly filed Terminal Disclaimer.

Furthermore, prior to filing a Terminal Disclaimer, the Applicant should review the current state of the Application (namely, are there other art-based (102/103) rejections in the outstanding Office Action, or is the Obviousness-Type Double Patenting rejection the only remaining rejection?) As indicated above repeatedly, the claims form the basis for a Double-Patenting rejection. Thus, if the Applicant will likely amend the claims to overcome an art-based rejection, an Applicant may want to hold off on filing the Terminal Disclaimer as there is a possibility that the scope of the claims may change due to the claim amendment. However, if the Obviousness-Type Double Patenting rejection is the only remaining rejection, filing a Terminal Disclaimer may be appropriate to expedite the receipt of a Notice of Allowance.

For further information regarding Double-Patenting rejections, you are invited to review at least: MPEP 804

– Joseph Iskra

If conducted properly, an examiner interview can be one of the most effectual means for furthering patent prosecution if there is an item in dispute which negates the patentability of a patent application. For example, if the Applicant disagrees with a rejection/objection contained within an outstanding Non-Final Office Action, it is advisable to request an Examiner Interview (which will likely be granted by the Examiner).

Hence, by conducting an Examiner Interview, not only is the Applicant able to point out why the cited art does not teach the various recitations of the claims, but it also provides the Examiner with an opportunity to gain a further understanding of the Application.

In view of the above, it is submitted that such a result is a win-win for both the Applicant and the Examiner. The result is a win for the Applicant as it is likely that the Examiner will withdraw the rejections/objections that are present in the outstanding Office Action. Furthermore, it is a win for the Examiner as they will many times step away from the Interview with a better understanding of the Application and will therefore be able to conduct a more focused/proper prior art search. Additionally, if the Examiner is able to better understand the subject application, they will likely be able to conduct the search with less difficulty.

The role of a properly conducted prior art search by the Examiner is extremely beneficial for an Applicant. Although U.S. Patent Law does not require an Applicant to conduct a prior art search (however it does impose a duty upon the Applicant and their representative(s) to identify any known information “material to patentability”), if the Applicant forgoes an initial prior art search before drafting a patent application (which is not advised), a well-conducted prior art search by the Examiner may provide the Application with an additional layer of protection. Accordingly, if Office Actions contain rejections that are at least reasonable, they will in effect strengthen the Application.

Furthermore, it should be noted that the MPEP indicates that an interview cannot be employed to “sound out” the examiner MPEP 713.03. Instead, the Interview should only be used if it “could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.” MPEP 713.01

An Interview does not remove the necessity for replying to an Office Action as specified in Section 1.134. Furthermore, although Examiner Interviews are normally not granted before a First Office Action (except for continuing or substitute applications), it must be additionally noted that the Applicant does not have an absolute right for an interview after a Final Rejection (but the examiner may grant the interview if they so choose). My personal experience regarding requests for conducting an Examiner Interview if the outstanding Office Action is Final have been mixed. Although I have not kept an accurate accounting, I believe Examiners are more likely to NOT grant a request for an Interview if the outstanding Office Action is Final.

However, after the First Office Action, an Examiner Interview is allowed as a matter of right. Further, an Interview is normally not granted after an appeal brief is filed or after an Application has been passed to issue. MPEP 713.05 Additionally, the Interview should be arranged for in advance.

Of the “recognized” methods of communication, In-Person Examiner Interviews can be quite effective for furthering prosecution. A trip to the PTO may be worthwhile because the examiner may have an opportunity to see the invention physically (if one is available) and physical interaction builds rapport. However, the Applicant will incur additional costs related to Practitioner travel, etc. (even if the practitioner is located in Washington, D.C.). The prior point cannot be stressed enough especially in todays tough economy.

However, in contrast to In-Person Examiner Interviews, I have found that telephonic interviews can be an equally effective means to accomplish an Applicant’s goals. Further, a number of Examiners have stated to me that they actually prefer a telephonic interview if it is coupled with a concise “agenda.” Additionally, such an “agenda” is actually required by the MPEP. Specifically, MPEP 713.01 states that, “When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed.”

In the PTOL-413A (or the agenda), I normally include a description of: the rejection, the claim number and a portion of the claim recitation that I want to discuss. In this way, by pointing out to the Examiner which issues I want to discuss with detailed particularity, the Examiner can review the specific claim recitation I indicated, and further, can review the art which was correlated as allegedly teaching the indicated claim recitation. By providing such information in advance, a more constructive conversation can be maintained.

Finally, I cannot stress enough the importance of treating the Examiner the way you yourself would want to be treated. As human beings, we constantly disagree on a number of matters on a daily basis. However, many times it is the case that both parties to a disagreement essentially agree, but either one or both of the parties are not listening. By failing to listen to the other, one may not realize that a mutual understanding does indeed exist between both parties. For example, sometimes a single word can have conflicting meanings to both the Applicant and Examiner, and therefore create a contention. Other times, there is a misunderstanding regarding the function that a certain item in the cited art performs. Listen carefully, and you will likely obtain a desired result.

Further details regarding Examiner Interviews may be found in at least @ MPEP 713.01.

– Joseph Iskra

One of the first questions a patent attorney/agent should ask an inventor during the initial inventor interview is whether the invention was disclosed/used/sold ANYWHERE outside of the inventor’s organization. This inquiry is critical as 35 U.S.C. 102(b) bars patentability of an invention if various conditions are present. More specifically, further to the aforementioned law, patentability will be barred in the United States if MORE THAN ONE-YEAR PRIOR TO filing in the United States, 1) the invention was patented or described in a printed publication ANYWHERE in the world; 2) the invention was in PUBLIC USE in the United States; OR the invention was ON SALE in the United States.

A simple shortcut for remembering the various 102(b) statutory bars is: the publication or patenting of an invention can occur anywhere, while the use or sale is limited to this country (the United States), MORE THAN one year before the U.S. filing. Additionally, although the statutory bars are absolute, there is a limited experimental-use exception (which requires its own post) which if applicable, may not bar patentability.

Furthermore, in addition to the aforementioned inquiry, the attorney/agent should ask the inventor whether any web pages, handouts, presentations, web pages, brochures, etc. were ever generated for the invention (even a single copy or a single public use). Its important to ask whether any of the aforementioned items were generated as the Inventor may not realize that a disclosure even occurred until asked about specific items. If any of the aforementioned items were indeed generated and disclosed to the public, patentability may be lost if a year has elapsed since the disclosure to the public. However, if a disclosure has occurred, and a year has not elapsed, the practitioner should immediately inform the inventor (or organization that will likely be assigned the patent) that patentability will be lost unless the application is filed within the one-year grace period.

Although these statutory bars may seem harsh, in comparison to most other foreign countries, the United States has one of the most liberal grace periods (of one-year). In fact, many foreign countries do not provide any sort of grace period prior to filing; therefore, any sort of disclosure of an invention prior to filing may bar patentability in such countries. However, as most foreign countries allow an Applicant to file a patent application therein within one year of filing in another country, the Applicant may want to firstly file the application in the United States (and than file within the foreign country within a year) if foreign protection will likely be sought. However, notwithstanding the foregoing, if foreign protection will be sought, a proper investigation should be conducted for each particular foreign country (as patent protection is regional) prior to any public disclosure.

Overall, it is nearly always preferable to firstly file a patent application prior to any disclosure, public use or offer for sale. However, as the “real world” does not always for such a setting, it is highly advisable that the practitioner advise their client appropriately of the consequences that may result in view of the aforementioned statutory bars. For further details regarding “public use” and “on sale” activities in the United States, the reader is invited to review MPEP 2133.03.

– Joseph Iskra

Welcome to Presumptionofvalidity. I am glad you stopped by! Through this blog, the author hopes to share value-added information regarding U.S. patent practice and facilitate communication amongst patent practitioners (and anyone else that may be interested) globally.

– Joseph Iskra