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In the U.S., patents are issued by the U.S. Patent and Trademark Office (“USPTO”). When a patent application is submitted, the USPTO will assign a patent examiner to the application. In general, the patent examiner is tasked with ensuring that the patent application meets the legal requirements. If the legal requirements are NOT met, then a rejection will be issued. One legal requirement for obtaining a patent is that only one patent can be issued for an invention (or a patent claim related to an invention). In other words, an invention cannot be patented twice. If a patent has already been issued for an invention or a patent claim, then the patent will be rejected for lack of novelty, or for “double patenting” if the same inventor is involved.
Rejection for double patenting only involves patent applications filed by inventors already owning patents or who are filing more than one application. That is, if an inventor is filing for the very first time, there is no danger of rejection for double patenting. If a patent has already been issued to some third party inventor for the supposedly-new claim/invention, the new patent application will NOT be rejected for double patenting. Rather, it will be rejected because it is not novel (new).
There are two types of rejections for double patenting: rejection for statutory double patenting and for nonstatutory double patenting. Double patenting is legally and factually complex and there is much nuance in the law. Moreover, the public policy reasons and justifications for rejections based on double patenting are slightly different. Here is a brief explanation.
What is rejection for statutory double patenting?
Statutory double patenting most often exists when patent claims are identical or nearly identical in two different patent applications. This happens most often when an inventor files two patent applications or when a single patent application is divided — a “divisional” patent application. As an example, take a hypothetical patent claim (modified from Omega Patents, LLC v. CALAMP CORP., Case No. 2020-1793, 2020-1794 (Court of Appeals, Federal Circuit 2021)).
Claim 1. A wireless tracking system for a vehicle comprising a data communications module and at least one vehicle connected thereto, the tracking system comprising:
a transmitter and a receiver for receiving signals from said module; and
a multi-vehicle compatible module cooperating with said transmitter and said receiver and for storing a set of device codes for a given vehicle device for a plurality of different vehicles …
If the patent applicant files a second patent application with a claim that contains the exact same wording (or a nearly identical claim with a few immaterial word changes), then the USPTO will reject the latter-filed application for statutory double patenting. The policy reason is the one identified above: an inventor cannot have two patents for the same invention/claim. This prohibition is in the Patent Act. Thus, this is called rejection for statutory double patenting.
What is rejection for nonstatutory double patenting?
Rejection for nonstatutory double patenting is a judge-made doctrine that applies most often to continuation patent applications. The public policy justification is to prevent inventors from having a longer patent monopoly that the Patent Act allows. Again, identical claim language will result in a rejection for nonstatutory double patenting. Likewise, if the new patent claim is worded differently, but is “essentially the same,” then the new patent claim will be rejected for nonstatutory double patenting. Evaluation of “essentially the same” is very similar to how the USPTO evaluates issues of novelty and obviousness and how courts evaluate allegations of patent infringement.
Contact Revision Legal
For more information or if you have an invention or design that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.
Double patenting rejections are rooted in the principle that the patent system grants a limited monopoly—one patent per invention, with a defined term. 35 U.S.C. § 101 implicitly prohibits the issuance of two patents for the same invention by the same inventor. The Federal Circuit has consistently held that double patenting prevents an inventor from obtaining serial patents that effectively extend the duration of patent exclusivity beyond the statutory 20-year term measured from the earliest filing date.
Statutory double patenting, also called “same invention” double patenting, involves claims that are identical or patentably indistinct. It arises most frequently when an inventor files two applications with overlapping claims, or when a divisional application ends up claiming the same invention as its parent. Statutory double patenting cannot be overcome by a terminal disclaimer—it is an absolute bar.
Nonstatutory double patenting—often called obviousness-type double patenting—is the far more common rejection. It applies when two patent claims are not identical but are so similar that one would have been obvious in view of the other. The policy rationale is the same: preventing artificial extension of patent exclusivity by filing a second application claiming an obvious variant of a patented invention.
The good news is that nonstatutory double patenting can typically be overcome by filing a terminal disclaimer under 37 C.F.R. § 1.321(c). A terminal disclaimer accomplishes two things:
Double patenting rejections are especially common in continuation and continuation-in-part (CIP) applications. In CIP applications that add new subject matter, the new claims may be examined against the parent application’s claims for double patenting even though the technology differs slightly. The Federal Circuit’s decision in In re Hubbell, 709 F.3d 1140 (Fed. Cir. 2013), confirmed that obviousness-type double patenting applies across related applications regardless of whether the applications share a common inventor.
Strategic management of continuation and CIP applications includes proactive assessment of double patenting exposure before filing, and timely terminal disclaimer filings when rejections are received. Delays in addressing double patenting rejections can result in abandoned claims.
The America Invents Act (AIA) did not eliminate double patenting doctrine, but it changed the landscape in important ways. Under pre-AIA law, joint inventors could not be cited in a double patenting rejection if at least one different inventor was on each application. AIA effectively modified this by introducing derivation proceedings and changing inventorship rules. For applications filed after March 16, 2013, assignee-level common ownership—not just shared inventorship—can trigger double patenting analysis under the updated provisions of § 102(b)(2)(C).
If you have questions about the issues discussed in this article, contact the experienced attorneys at Revision Legal. We handle intellectual property, internet law, and business law matters for clients across the country. Contact us online or call us at 1-855-RL-LEGAL.
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