Chapter 800 Flashcards
What is a restriction requirement?
When a single patent application contains claims directed to 2 or more distinct and independent inventions, the examiner will issue a restriction requirement
Once issued, the applicant is required to elect one of the inventions and prosecution will proceed only with respect to the elected invention
For the inventions not elected, will be withdrawn from consideration, and the applicant may file 1 or more divisional applications claiming the non-elected subject matter.
Once an election is made, and an Office Action is issued, the Patent Office will not allow applicant to shift and claim one of the non-elected inventions
What is double patenting? statutory double patenting?
When an applicant attempts to receive multiple patents claiming the same invention (unjustifiably extend the term of the rights granted by a patent)
double patenting that can occur between an issued patent and 1 or more applications or between co-pending applications
What is a provisional double patenting rejection?
It is issued where the issue can be addressed without violating the confidential status of applications, and as long as there are conflicting claims in the applications or the rejection in the only rejection remaining in at least 1 of the applications.
If the examiner allows one of the applications, then it would turn the provisional double patenting rejection into a statutory double patenting rejection
What is non-statutory double patenting?
It is appropriate where the conflicting claims are not identical, but obvious in light of each other
Also known as “obviousness-type double patenting”
applications or patents commonly owned if they were wholly or entirely owned by the same person or organization at the time the claimed invention was made
How can one avoid a non-statutory double patenting rejection?
by filing a terminal disclaimer in the application or proceeding in which the rejection is made
What is terminal disclosure?
a statement filed by an owner of a patent or a patent application that is used to disclaim or dedicate a portion of the entire term of all the claims of a patent
How can one avoid a statutory double patenting rejection?
by amending or canceling the conflicting claims so that they are not co-extensive in scope
terminal disclaimer is NOT effective in overcoming a statutory double patenting rejection
Rule 131 “swearing back” affidavit cannot be used to overcome any type of double patenting rejection because the rejection involves a patent reference where the same invention is involved
