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   Obviousness-type Double Patenting
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   Author  Topic: Obviousness-type Double Patenting  (Read 1009 times)
bluesky
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Obviousness-type Double Patenting
« on: Oct 25th, 2007, 2:11pm »
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Quick ?:  If a plurality of applications claim priority to the same parent applcation, can an obviousness-type double patenting rejection be properly issued in one of the applications over the claims of the other applications?
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pentazole
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Posts: 197
Re: Obviousness-type Double Patenting
« Reply #1 on: Oct 25th, 2007, 3:49pm »
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yes, the requirement for double patenting is for the applications to have at least one common inventor, be under the same research agreement, or be assigned/owned by the same entity.
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bluesky
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Re: Obviousness-type Double Patenting
« Reply #2 on: Oct 29th, 2007, 11:16am »
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Thanks, but my ? is more related to whether the cited application/patent that forms the basis of the obviousness-type double patenting must be "prior art" within the meaning of 35 USC 102?  
 
I have reviewed some materials suggesting this is the case, but see no support for the assertion in the MPEP.  In the hypo, the priority date for all the applications would be the same, thus, none of the applications would be prior art to the other.
 
Love to hear anyone's thoughts on this.  Thanks.
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Isaac
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Re: Obviousness-type Double Patenting
« Reply #3 on: Oct 29th, 2007, 1:10pm »
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on Oct 29th, 2007, 11:16am, bluesky wrote:
Thanks, but my ? is more related to whether the cited application/patent that forms the basis of the obviousness-type double patenting must be "prior art" within the meaning of 35 USC 102?

 
There is no such requirement.   The PTO may in some cases allow the first filed application to issue but there is no requirement that either application be prior art over the other.   In fact, even if the applications claim a common priority date, a double patent rejection between the applications is still permissible.
 
 
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Isaac
bluesky
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Re: Obviousness-type Double Patenting
« Reply #4 on: Oct 29th, 2007, 1:16pm »
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Thanks, helps along with looking at MPEP 804.02, which states:  
 
There are at least two reasons for insisting upon a terminal disclaimer to overcome a **>nonstatutory< double patenting rejection in a continuing application subject to a 20-year term under 35 U.S.C. 154(a)(2). First, 35 U.S.C. 154(b) includes provisions for patent term extension based upon prosecution delays during the application process. Thus, 35 U.S.C. 154 does not ensure that any patent issuing on a continuing utility or plant application filed on or after June 8, 1995 will necessarily expire 20 years from the earliest filing date for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c).  
 
To this, I ask however - what about a claim for priority under 35 USC 119 to a provisional application?  Strange, MPEP 804.02 doesn't mention 35 USC 119, thus I am wondering if there is any differentiation if the subject application and the one forming the basis of the DP rejection claim priority to the same provisional application.  I'm guessing in-line with your statements and this cite, no, but can't find an exact cite for this statement.
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