Double "double patenting" rejection - any additional considerations?

[EvilLost]

Scenario:

Client filed 3 PCT applications directed to very similar subject matter (same inventor, filed on same day, very similar titles/drawings, but do NOT reference or IBR each other in any way). The main independent claim of all 3 applications share about 75-80% identical wording, but there are distinct differences between the 3 applications.

All 3 applications entered US national phase.
-Apps 1 and 2 went to Examiner A, who ultimately allowed both applications. Neither App 1 nor 2 had any double patenting issues. App 1 issued last year.  App 2 I paid the issue fee for yesterday, but has not yet issued.
-App 3 went to Examiner B, who has indicated allowable subject matter, but for a double patenting rejection to App 1 AND a double patenting rejection to App 2.

I believe some arguments do exist as to why these applications are patentably distinct, but the arguments are not very strong. My colleagues have suggested that we just file the terminal disclaimers and go to allowance rather than waste time and money arguing against the double patenting rejections. 

Typically, a double patenting rejection is issued even where the claims are not identical (as in this case) but where the applications are not "patentably distinct" in view of one another (ie obvious). In light of that, does filing a terminal disclaimer create a presumption of obviousness? An admission of such?

My concern is as follows:


If I file a terminal disclaimer in App 3 in view of App 1, AND a second terminal disclaimer in App 3 in view of App 2 - can there be any concerns that I am (implicitly?) admitting that Apps 1 and 2 may be subject to double patenting and/or obvious in view of eachother?


I don't think this is a prosecution problem (should I wait for app 2 to formally issue just in case?), but I am not sure what, if any, potential issues may arise with litigation? Am I overthinking this?

[lazyexaminer]

SimpleAir, Inc. v. Google LLC, 884 F.3d 1160, 1167-68 (Fed. Cir. 2018) is really drawn to a different issue (claim preclusion), but at the same time seems to make pretty clear, while citing a number of cases, that filing a TD creates no presumption.

My understanding is also that you can file a TD later after issuance, even during litigation, if it becomes necessary, so long as the earlier patent isn't expired yet. So 1 and 2 might be linked later if deemed necessary. No idea what kind of issues that might create though, e.g. any effect on damages.

[Robert K S]

If they were filed on the same day, unless there is a lot of PTA, there shouldn't be very much concern about term limiting the applications, either explicitly or (somehow) implicitly (as you worry about).  That leaves as the only serious concern the possibility that the applications will be assigned apart from each other.  If that's not a concern, then it's questionable what the concern is, other than the comparatively modest terminal disclaimer fee.

BTW, I think it used to be that you had to file separate terminal disclaimer forms and hence pay separate fees for each other patent you were disclaiming against, but now it is possible to disclaim against multiple patents with a single fee.  Isn't that right?

[ThomasPaine]

MPEP § 804.02, the filing of a terminal disclaimer to obviate a rejection based on nonstatutory double patenting is not an admission of the propriety of the rejection. (Citing Quad Environmental Technologies Corp. v. Union Sanitary District, 946 F.2d 870, 20 USPQ2d 1392 (Fed. Cir. 1991).)  In Quad Environmental Technologies, the court indicated that the "filing of a terminal disclaimer simply serves the statutory function of removing the rejection of double patenting, and raises neither a presumption nor estoppel on the merits of the rejection."

[Toot Aps Esroh]

So, based on everything the prior commenters have provided, if there's no presumption or admission in view of your having filed the TD in case 3, there should not be a presumption about 1 vs. 2 or 2 vs. 1.

[EvilLost]

I had pulled up MPEP 804, but somehow I missed that particular line. Appreciate the references.

I guess the only real concern is the co-ownership requirement.

Thanks all

[Lefty714]

BTW, I think it used to be that you had to file separate terminal disclaimer forms and hence pay separate fees for each other patent you were disclaiming against, but now it is possible to disclaim against multiple patents with a single fee.  Isn't that right?

See MPEP 804.02(IV) - "To avoid paying multiple terminal disclaimer fees, a single terminal disclaimer based on common ownership may be filed, for example, in which the term disclaimed is based on all the conflicting, commonly owned nonstatutory double patenting references."

Also, go to https://www.uspto.gov/patents-application-process/applying-online/eterminal-disclaimer, which states "Each eTerminal Disclaimer filed requires a single terminal disclaimer fee, but can include up to 50 'reference applications' and 50 'prior patents.'"

I only know this because I had to look it up earlier this week. We would normally just use the fillable PDF form which does not appear to allow inclusion of multiple patents. I suppose as an alternative you can make your own terminal disclaimer form so that you can include multiple patents if necessary.