Double patenting concern

[w***@aol.com]

In a very simplified scenario, application A has a switch to change
the color of a light bulb as a critical element. Application B filed
after A, has the same switch as an element, but is used to swap the
colors as well as the intensities of two light bulbs.

Application B is neither a divisional nor continuation of application
A. If both applications were filed by the same party, is there any
danger of ending up with double patenting? Would the patent office
give a warning if that might be an issue?

Thank you in advance ...

[Steve Marcus]

Post by w***@aol.com
In a very simplified scenario, application A has a switch to change
the color of a light bulb as a critical element. Application B filed
after A, has the same switch as an element, but is used to swap the
colors as well as the intensities of two light bulbs.
Application B is neither a divisional nor continuation of application
A. If both applications were filed by the same party, is there any
danger of ending up with double patenting?

Yes, a very good chance. However, the rejection would not be for "same
invention double patenting" under 35 USC 101, which is applicable only to
claims in an application that are identical in scope to the claims of a
prior patent to the same inventor(s). The rejection would be for
"obviousness type double patenting," a judicially created doctrine which
states that an application may not include one or more claims directed to an
invention that is claimed in a prior patent that issued to at least one
inventor named in the application, where the application and patent are
commonly owned and the claims in question although not of identical scope,
are merely obvious variations. See MPEP 804, and then MPEP 804.03, linked
here:

http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_0800.pdf

Would the patent office

Post by w***@aol.com
give a warning if that might be an issue?

The warning would be in the form of a rejection in the application. The
rejection is overcome by filing a terminal disclaimer that (1) binds
ownership of the prior patent and any patent issuing on the application to
the same owner, and (2) disclaims the terminal portion of the term of the
patent issuing on the application so that the two patents expire on the same
date.

Post by w***@aol.com
Thank you in advance ...

You're welcome.

Steve

[Tim Jackson]

On Wed, 4 Mar 2009 06:48:56 -0500, Steve Marcus wrote...

[re "obviousness type double patenting,"]

Post by w***@aol.com
Would the patent office
give a warning if that might be an issue?

The warning would be in the form of a rejection in the application.

If the Examiner spotted the problem, and if he thought a rejection
justified, then that's right. Otherwise, you'd get no warning.

Bear in mind that you are supposed to tell the examiner about your own
earlier application if it could be considered material to the
examination of the present one.

It's best to err on the side of telling the examiner such things, even
if you're not sure it's material. Otherwise, you can bet your life that
in any subsequent litigation over the patent, the defendant will argue
that you were guilty of inequitable conduct, and that the patent is
therefore unenforceable.

The
rejection is overcome by filing a terminal disclaimer that (1) binds
ownership of the prior patent and any patent issuing on the application to
the same owner, and (2) disclaims the terminal portion of the term of the
patent issuing on the application so that the two patents expire on the same
date.

Or alternatively, you can argue that the claims of B are not in fact
obvious from the claims of A. In William's hypothetical, it seems to me
that B has some significant differences over A, so it might be worth
arguing rather than just caving in.

Double patenting rejections most often arise in divisionals or
continuations, when there is little to be lost by filing a terminal
disclaimer. So many people don't bother arguing. But in the present
hypothetical, the terminal disclaimer would sacrifice some of the patent
term.

[w***@aol.com]

Post by Tim Jackson
Bear in mind that you are supposed to tell the examiner about your own
earlier application if it could be considered material to the
examination of the present one.
It's best to err on the side of telling the examiner such things, even
if you're not sure it's material. Otherwise, you can bet your life that
in any subsequent litigation over the patent, the defendant will argue
that you were guilty of inequitable conduct, and that the patent is
therefore unenforceable.

I have reviewed the application and just realized that I have
mentioned in the cross references section that this application (B)
relates to an earlier application (A). I hope that that clears things
up.