Filing A Divisional Application In The United States - Part 14

This is the fourteenth post in our 16-part series examining divisional practice in Argentina, Brazil, Canada, China, Europe, India, Indonesia, Malaysia, Mexico, Pakistan, Russia, Thailand, Saudi Arabia, Singapore, the United States, and Vietnam (in no particular order). Our first thirteen posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, Thailand, Pakistan, Malaysia, Singapore, Russia, Saudi Arabia and Vietnam and can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, Divisional Practice -Thailand, Divisional Practice – Pakistan, Divisional Practice – Malaysia, Divisional Practice – Singapore, Divisional Practice in Russia, Divisional Practice in Saudi Arabia and Divisional Practice in Vietnam.

Divisional Practice in the United States

In the U.S., a pending application may serve as the basis for a continuing application. Three types of continuing applications exist under U.S. practice, namely divisional, continuation, and continuation-in-part applications. A continuing application may itself serve as the basis for another continuing application.

Time Period for Filing a Continuing Application

One or more divisional, continuation, and/or continuation-in-part applications may be filed any time prior to grant of a U.S. patent application.

Requirements for Filing a Continuing Application

When filing a continuing application, the following documents must be submitted:

1. A copy of the specification, drawings, and abstract;
2. A set of claims to be pursued;
3. An oath or declaration (for continuation-in-part applications) or a copy of a previously submitted oath or declaration (for divisional and continuation applications); and
4. Basic filing, search, and examination fees.

Additional fees will be required for more than three independent claims, more than 20 total claims, and for each additional 50 sheets that exceeds 100 sheets.

Claims of a Continuing Application

Divisional Application: U.S. law provides that if an application contains claims directed to two or more independent and distinct inventions, an Applicant may be required to elect a single invention for examination on the merits. Each non-elected invention may be pursued in what is referred to as a “divisional” application(s). Because restriction was required in the parent (original) application, the parent application cannot serve as the basis of a double patenting rejection as long as the claims of the divisional application are directed to a non-elected invention. In another words, in a properly filed divisional application, a double patenting rejection cannot be made.

Continuation Application: A continuation application contains the originally disclosed subject matter. A continuation application may be filed with the originally filed claims and/or new claims (provided that there is support for the claims in the specification as originally filed). The parent application (or another continuation application that claims priority back to the parent application) may serve as the basis of a double patenting rejection during examination of any continuation application.

Continuation-in-part Application: A continuation-in-part application contains the originally disclosed subject matter, plus additional, new subject matter. Accordingly, the claims of a continuation-in-part application may be directed to the originally disclosed subject matter, the newly disclosed subject matter, or a combination thereof. The parent application (or a continuation application that claims priority back to the parent application) may serve as the basis of a double patenting rejection during examination of a continuation-in-part application.

Under U.S. practice, the doctrine of double patenting prevents an Applicant from extending patent exclusivity beyond the term of a patent. This doctrine assumes that the public will be free to use the claimed invention, plus modifications and variants that would have been obvious to one of ordinary skill in the art upon expiration of a patent. Double patenting may be raised when an issued patent and one or more pending applications (referred to as “non-provisional” double patenting) or two or more pending applications (referred to as “provisional” double patenting because neither application has yet issued as a patent) meet one of the following requirements: (1) have the same inventors; (2) have at least one common inventor; (3) are commonly assigned or owned; or (4) are non-commonly owned or assigned, but subject to a joint research agreement.

Generally, two types of double patenting exist in U.S. practice:

1. Statutory Double Patenting: Based on 35 U.S.C. § 101, refers to the fact that an Applicant may obtain only a single patent per invention. Accordingly, if the claims of an application being examined and an issued patent or pending application are directed to the same invention, a statutory double patenting rejection will be issued by the United States Patent and Trademark Office (USPTO). The phrase “same invention” means identical subject matter. The test of whether or not the same invention is being claimed twice is whether the claim in an application being examined can be infringed without literally infringing a corresponding claim in a patent or pending application. An example is provided below.

• Claim in a pending application undergoing examination: A compound of Formula I wherein X is chlorine.
• Claim in issued patent: A compound of Formula I wherein X is chlorine.
• Test: Can the claim in the examined application be infringed without literally infringing the claim in the issued patent? Answer: No. The claim in the application being examined will be rejected by the Examiner for statutory double patenting.
• Non-statutory Obviousness-type Double Patenting: This type of double patenting is the result of a judicially created doctrine. Non-statutory obviousness-type double patenting intends to prevent an Applicant from extending patent exclusivity by obtaining claims in a second patent that are patentably indistinguishable (in other words, not patentably distinct) from the claims in another patent or pending application. Accordingly, if the claimed invention in an application that is being examined (such as in a continuation or continuation-in-part application) is an obvious variant or modification of a claimed invention in an issued patent or pending application, a non-statutory obviousness-type double patenting rejection will be issued by the USPTO. Essentially, a non-statutory obviousness-type double patenting rejection is considered to be “analogous” to a failure to meet the obviousness requirement of 35 U.S.C. Section 103 except the patent or pending application underlining the double patenting rejection does not have to be prior art.

The key inquiry in a non-statutory obviousness-type double patenting rejection is the differences between the inventions defined by the conflicting claims. The specification can only be used to construe the meaning of the claims (namely, as a dictionary to learn the meaning of the term in the claims).

Overcoming a Double Patenting Rejection

1. Statutory Double Patenting: A statutory double patenting rejection may be overcome by: (a) amending the claims in the application being examined so as not to be coextensive in scope with the claims of the issued patent or pending application that form the basis of the rejection; (b) arguing the rejection; (c) canceling the conflicting claims in the application being examined; (d) if a “provisional” statutory double patenting rejection is the only rejection remaining in both applications, asking the Examiner to withdraw the rejection in the application with the earlier filing date and permitting that application to issue as a patent (if both applications were filed on the same date, Applicant will need to elect which of the two applications is to be allowed); or (e) abandoning the application in which the rejection is raised. A terminal disclaimer cannot be used to overcome a statutory double patenting rejection.
2. Non-statutory Obviousness-type Double Patenting: A non-statutory obviousness-type double patenting rejection may be overcome by: (a) amending the claims in the application being examined to be patentably distinct over the claims of the issued patent or pending application that form the basis of the rejection; (b) arguing the rejection; (c) canceling the claims at issue in the pending application being examined; (d) if a “provisional” non-statutory obviousness-type double patenting rejection is the only rejection remaining in both applications, asking the Examiner to withdraw the rejection in the application with the earlier filing date and permitting that application to issue as a patent (if both applications were filed on the same date, Applicant will need to elect which of the two applications is to be allowed); (e) if the rejection is a “provisional” rejection, abandoning one of the pending applications; or (f) filing a terminal disclaimer.

Terminal Disclaimers

A terminal disclaimer is a legal document that ensures that the term of a patent granted on an examined application will not extend past the expiration of the term of the conflicting patent or a patent granted on a conflicting application. A terminal disclaimer is effective only if there is common ownership between the conflicting claims at issue. If there is no common ownership, a terminal disclaimer cannot be filed. Additionally, it is important to remember when conducting due diligence that a patent granted in which a terminal disclaimer is filed is enforceable only as long as the patent issuing and the prior patent that formed the basis of the non-statutory obviousness-type double patenting rejection are commonly owned.

A terminal disclaimer must: (1) specify the portion of the term of the patent being disclaimed; (2) state the present extent of Applicant’s or Assignee’s ownership interest in the patent to be granted; and (3) indicate that the terminal disclaimer fee is enclosed (Presently, $170.00 per terminal disclaimer filed for a large, small or micro entity). The terminal disclaimer may be signed by the Applicant or an attorney or agent of record.

A terminal disclaimer operates with respect to all claims in a patent. A terminal disclaimer is only effective with respect to the application identified in the disclaimer, unless an Applicant specifically recites that the disclaimer applies to one or more continuation applications.

A certificate of correction cannot be used to remove a terminal disclaimer mistakenly filed during prosecution or which is no longer believed to be necessary. However, an Applicant can file a petition to withdraw a terminal disclaimer during prosecution before an application issues if grounds are provided explaining why the terminal disclaimer(s) is no longer believed to be necessary. A reissue proceeding cannot be used to withdraw a terminal disclaimer that is in effect at the time a patent issues.