What is the difference between a double patenting objection and a non-statutory double patenting rejection?

Exploring a Patent, the MPEP, and the Patent Bar, What Is The Difference?

Understanding patent law is crucial for inventors and businesses looking to protect their intellectual property. It is important to be well-versed in the various concepts and procedures involved in patent law in order to navigate the complex landscape effectively. Two common terms that often arise in patent examination are “double patenting objection” and “non-statutory double patenting rejection.” While they may sound similar, they have distinct meanings and implications. In this article, we will explore the differences between these two terms, providing a comprehensive understanding of their significance in the patent examination process.

Understanding Patent Law

Basic Concepts of Patent Law

Before delving into the specifics of double patenting objections and non-statutory double patenting rejections, it is essential to grasp the fundamental concepts of patent law. A patent is a legal right granted by a government to an inventor, giving them exclusive rights to their invention for a limited period. It allows the inventor to prevent others from making, using, or selling their invention without their permission.

In addition to granting exclusive rights, patent protection serves various purposes within the realm of innovation and knowledge dissemination. One primary purpose is to incentivize innovation by providing inventors with a monopoly over their invention. This monopoly allows inventors to recoup their investment and profit from their creativity, thus encouraging further research and development.

Furthermore, patents play a crucial role in promoting disclosure. When inventors apply for a patent, they are required to publicly disclose the details of their invention. This disclosure contributes to the body of knowledge in their respective field, allowing other inventors and researchers to build upon existing ideas and push the boundaries of innovation.

Importance of Patent Protection

Securing patent protection is of utmost importance for inventors and businesses alike. It provides legal certainty and establishes a competitive advantage by preventing others from exploiting their invention. By obtaining a patent, inventors can ensure that their hard work and ingenuity are protected, allowing them to reap the rewards of their innovation.

Moreover, patents serve as valuable assets that enable inventors to monetize their creations. Through licensing agreements or commercialization, inventors can turn their patented inventions into a source of revenue. This not only benefits the inventors themselves but also contributes to economic growth and job creation.

Beyond individual inventors and businesses, patents have a broader impact on society. By encouraging technological advancements, patent laws foster innovation across various industries. These advancements, in turn, drive economic growth, improve quality of life, and address societal challenges. Whether it’s a groundbreaking medical device or a revolutionary software application, patents play a vital role in shaping the world we live in.

In conclusion, patent law encompasses more than just the specific legal mechanisms surrounding double patenting objections and non-statutory double patenting rejections. It is a complex system that aims to protect inventors, incentivize innovation, promote knowledge sharing, and drive economic progress. Understanding the basic concepts of patent law and recognizing the importance of patent protection is crucial for anyone involved in the field of intellectual property.

Defining Double Patenting

The Concept of Double Patenting

Double patenting refers to a situation where two patents claim the same invention and are granted to the same inventor or assignee. This occurrence raises concerns about patent monopolies and the potential for multiple exclusive rights over the same invention.

When it comes to double patenting, there are different forms that can arise, such as “same invention” or “obviousness” double patenting. “Same invention” double patenting occurs when claims of two distinct patents are directed to the same subject matter and effectively cover the same invention.

For example, imagine a scenario where an inventor obtains a patent for a new type of smartphone with advanced features. Later on, the same inventor or assignee applies for another patent claiming a specific component of that smartphone, such as the camera technology. If both patents are granted, it would result in double patenting because the second patent is claiming an aspect of the same invention already covered by the first patent.

On the other hand, “obviousness” double patenting refers to a situation where the claims of a second patent are obvious variants of the claims of an earlier, commonly owned patent. While the claims are not identical, they are deemed to be patentably indistinct due to their similarity.

For instance, let’s say an inventor obtains a patent for a new type of electric car with a unique charging system. Later on, the same inventor or assignee files for another patent claiming a slight modification to the charging system, which is considered an obvious variation. If both patents are granted, it would be considered obviousness double patenting because the second patent is claiming a minor modification that would have been obvious to a person skilled in the art based on the first patent.

Reasons for Double Patenting Objections

Double patenting objections aim to prevent inventors from extending their exclusive rights beyond the statutory term by obtaining additional patents on the same invention. These objections safeguard against unjustified patent monopolies and maintain the balance between inventors’ rights and public access to innovations.

When a double patenting objection is raised, it is typically during the patent examination process, at the request of a third party, or even during litigation. The purpose of these objections is to ensure that inventors do not unfairly monopolize a particular invention by obtaining multiple patents that cover the same subject matter.

It is important to note that double patenting objections can arise in different jurisdictions, as patent systems can vary from country to country. Each patent office has its own guidelines and criteria for determining whether double patenting exists and whether it should be objected to.

The consequences of a double patenting objection can vary depending on the jurisdiction and the specific circumstances. In some cases, the patent examiner may require the inventor to narrow or amend the claims of one of the patents to overcome the objection. This could involve removing or modifying certain claims to ensure that they do not overlap with the claims of the other patent.

In more severe cases, the second patent may be invalidated entirely if the double patenting objection cannot be overcome. This means that the inventor would lose the exclusive rights granted by the second patent, and only the first patent would remain in force.

Overall, double patenting objections play a crucial role in maintaining the integrity of the patent system and ensuring fair competition in the marketplace. By preventing inventors from obtaining multiple patents on the same invention, these objections help foster innovation and encourage inventors to explore new and different areas of technology.

Exploring Non-Statutory Double Patenting Rejection

What is Non-Statutory Double Patenting?

Non-statutory double patenting is a similar concept to traditional double patenting, but it arises in a different context. Unlike double patenting objections, which are based on statutory provisions, non-statutory double patenting rejections arise from judicially-created doctrines.

This doctrine originated in the United States to prevent patentees from obtaining multiple patents that effectively extend patent rights beyond the statutory term. Non-statutory double patenting is an equitable rather than a statutory defense, aiming to ensure fairness and prevent an unjustified extension of exclusivity.

Causes for Non-Statutory Double Patenting Rejections

Non-statutory double patenting can be triggered by various circumstances. One common scenario is when a patentee files a continuation or divisional application claiming subject matter that is not patentably distinct from the claims of their earlier, commonly owned patent.

Another cause for non-statutory double patenting is when a patentee files a patent application claiming an obvious variant of their earlier invention. Although the claimed subject matter is not identical to the earlier patent, it is considered patentably indistinct due to its obviousness.

Non-statutory double patenting rejections aim to prevent patentees from extending exclusivity beyond what is intended by the patent system, ensuring fairness and maintaining balance in the patent landscape.

Key Differences between Double Patenting Objection and Non-Statutory Double Patenting Rejection

Comparison of Procedures

One significant difference between a double patenting objection and a non-statutory double patenting rejection is their underlying basis. A double patenting objection is rooted in statutory provisions, acting as a safeguard against unjustified patent monopolies. In contrast, a non-statutory double patenting rejection is an equitable defense, created by the judiciary to prevent an unwarranted extension of exclusivity.

Additionally, the procedures to address these concerns differ. Overcoming a double patenting objection typically requires narrowing or amending the claims to disclaim the common subject matter. However, a non-statutory double patenting rejection may require the patentee to overcome the rejection by filing a terminal disclaimer or demonstrating patentably distinct subject matter.

Impact on Patent Holders

The implications of a double patenting objection and a non-statutory double patenting rejection also vary for patent holders. If a double patenting objection arises, the consequences can range from the need to amend the claims to avoid the objection to the potential invalidation of the second patent.

On the other hand, if a non-statutory double patenting rejection is issued, the patentee may be required to file a terminal disclaimer, disclaiming any term beyond the expiration date of the earlier patent. This disclaimer ensures that the exclusivity granted by the later patent does not extend beyond what is intended by the patent system.

Case Studies and Examples

Double Patenting Objection: A Case Study

To illustrate the practical implications of a double patenting objection, let us explore a hypothetical case study. Imagine an inventor who obtained a patent for a novel software algorithm. The inventor subsequently filed a continuation application for improvements made to the algorithm during further research and development.

During examination, the patent office issued a double patenting objection, asserting that the continuation application claimed the same subject matter as the original patent. To overcome the objection, the inventor amended the claims to focus on the unique aspects of the improvements. By narrowing the claims, the continuation application was eventually granted, providing the inventor with the desired protection for the advancements made to their invention.

Non-Statutory Double Patenting Rejection: A Case Study

Now, let us consider a case study involving a non-statutory double patenting rejection. Suppose an inventor obtained a patent for a medical device that addresses a specific medical condition. Later, the inventor files a new patent application claiming a modification of the device design.

The patent examiner issues a non-statutory double patenting rejection, asserting that the claims of the subsequent application are obvious variants of the claims in the earlier patent. In response, the inventor files a terminal disclaimer, disclaiming any term extending beyond the expiration date of the earlier patent. This action ensures that the exclusivity granted by the later patent is confined within the intended bounds of the patent term.


In conclusion, double patenting objections and non-statutory double patenting rejections are distinct concepts within the field of patent law. While both aim to prevent unjustified extensions of patent exclusivity, they differ in their basis, procedures, and implications for patent holders.

Understanding these terms and their significance is crucial for inventors and businesses navigating the patent examination process. By being aware of the differences between double patenting objection and non-statutory double patenting rejection, patent applicants can effectively address the concerns raised and ensure the proper protection of their inventions within the bounds of the patent system.