DOUBLE PATENTING ISSUES FOR PATENT APPLICATIONS

CONFLICTING CLAIMS & DOUBLE PATENTING

Double Patenting Issues

Double patenting issues arise when two or more pending applications, or one or more pending applications and a patent, share claims which are identical in scope. A double patenting may also occurring during the patent reexamination process between the reexamined patent claims and the claims of one or more applications and/or patents. Often, filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct over the other application’s or patent's claims, will be required to overcome any double patenting rejection issued by the patent office.  Our Dallas patent lawyers assist clients in preparing, searching, and filing U.S. patents.  Our patent attorneys are licensed with the United States Patent & Trademark Office and work in the specialty field of law governing intellectual property.   For more information on the preparing utility patents, see our Patent Registration page.

What Is A Terminal Disclaimer?

A terminal disclaimer is a statement in which a patentee or patent applicant dedicates to the public the entire patent term, or a portion of the patent term, for any part of the term of a patent or patent to be granted (i.e. patent application). This disclaimer is a statement generally filed by an owner of a patent or patent application, and such disclaimer states that the owner relinquishes certain legal rights in and to the patent in return for allowing the patent or patents to issue. Statutory and terminal disclaimers often occur in the following instances:

• A patent owner may discretionary disclaim any complete claim or partial claims in a patent;

• A patent applicant may disclaim or dedicate to the public the entire term, or any partial patent term, of a patent to be granted;

• A patent owner or applicant may file a terminal disclaimer when it is necessary to avoid a judicially created double patenting issues in a patent application or in a reexamination proceeding; and 

• A patent owner or applicant may file a terminal disclaimer in a patent application or in a reexamination proceeding to obviate double patenting based upon a a prior-art rejections using a patent or application that is not commonly owned.

Terminal disclaimers are used to avoid double patenting rejections from patent examiners.