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If I have an application B that I submit a terminal disclaimer for based on a non-statutory double patenting rejection due to a prior application A, and application A is subsequently rejected and not able to be allowed, what effect does this have on application B?

Can B still be allowed, or is it "game over" for both? If B is subsequently allowed, does the reduction in the patent term for B still stand?

And further questions: if B is being examined before A for some reason, would an allowance of B improve the chances of A being allowed?

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An actual non-statutory double patenting rejection can only be relative to an already issued patent. However a provisional non-statutory double patenting rejection can be issued based on a co-pending application. Often both applications will get such a rejection. If handled correctly, you would not end up with a terminal disclaimer based on a patent that never issued.

The merits of the prosecution of each application might be unconsciously affected positively or negatively if you have the same examiner. But if the applicant makes some admission, like - "you are correct, those two sets of claims in those two patent applications do not seem patentably distinct to me", that admission can hurt in both cases.

  • I'll avoid any admissions then. Why does the examiner state that "a timely submission of a terminal disclaimer" is requested to overcome the provisional non-statutory double patenting rejection then? This seems to put pressure on me to go ahead and do so. I guess I can address the 103 rejections in a first response, and put something along the lines of "I am seeking legal advice on the double patenting rejection" to defer it? – Keir Finlow-Bates Apr 23 '18 at 6:15
  • see the answer from @DonQuiKong. You can leave it until it is the last remaining rejection. – George White Apr 23 '18 at 22:26
  • Apparently double-patenting objections can't be held in abeyance anymore... – Keir Finlow-Bates Apr 25 '18 at 13:49
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Citing the relevant section of the MPEP:

B. Between Copending Applications—Provisional Rejections

An examiner may become aware of two or more copending applications that were filed by the same inventive entity, a different inventive entities having a common inventor, a common applicant, and/or a common owner/assignee, or that claim an invention resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3), that would raise an issue of double patenting if one of the applications became a patent. Where this issue can be addressed without violating the confidential status of applications (35 U.S.C. 122), the courts have sanctioned the practice of making applicant aware of the potential double patenting problem if one of the applications became a patent by permitting the examiner to make a “provisional” rejection on the ground of double patenting. In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976); In re Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966). The merits of such a provisional rejection can be addressed by both the applicant and the examiner without waiting for the first patent to issue.

A provisional double patenting rejection should continue to be made by the examiner until the rejection has been obviated or is no longer applicable except as noted below.

  1. Provisional Nonstatutory Double Patenting Rejections

A complete response to a nonstatutory double patenting (NDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.

As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Therefore, an application must not be allowed unless the required compliant terminal disclaimer(s) is/are filed and/or the withdrawal of the nonstatutory double patenting rejection(s) is made of record by the examiner. See MPEP § 804.02, subsection VI, for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995.

If two (or more) pending applications are filed, in each of which a rejection of one claimed invention over the other on the ground of provisional nonstatutory double patenting (NDP) is proper, the provisional NDP rejection will be made in each application. Where there are three applications containing claims that conflict such that a provisional NDP rejection is made in each application based upon the other two, and it is necessary to file terminal disclaimers to overcome the rejections, it is not sufficient to file a terminal disclaimer in only one of the applications addressing the other two applications. Rather, an appropriate terminal disclaimer must be filed in at least two of the applications to require common ownership or enforcement for all three applications. A terminal disclaimer may be required in each of the three applications in certain situations (e.g., when all three applications have the same effective U.S. filing date). See subsections (a) and (b) below.

And under 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. 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.”

(emphasis added both times)

It seems that the rejection has to be adressed. A terminal disclaimer can be filed without it beeing an admission.

The terminal disclaimer can then be withdrawn later acording to 804.02 MPEP (last paragraph)

If a terminal disclaimer is filed in an application in which the claims are then canceled or otherwise shown to be patentably distinct from the reference claims, the terminal disclaimer may be withdrawn before issuance of the patent by filing a petition under 37 CFR 1.182 requesting withdrawal of the recorded terminal disclaimer. A terminal disclaimer may not be withdrawn after issuance of the patent. See MPEP § 1490, subsection VII., for a complete discussion of withdrawal of a terminal disclaimer.

  • But if B has a terminal disclaimer limiting its lifespan to that of A, and B issues but A doesn't, does that mean that the lifespan of B effectively becomes 0 years? – Keir Finlow-Bates Apr 23 '18 at 8:46
  • Thanks for finding the explicit reference that a terminal disclaimer raises neither a presumption nor estoppel on the merits of the rejection. That removes one worry from my mind. – Keir Finlow-Bates Apr 23 '18 at 8:49
  • @KeirFinlow-Bates I think it becomes 20 yrs from the filing date of A, but I don't know to be honest. I can't imagine it would be aynthing less than that as that wouldn't make any sense ;-). – DonQuiKong Apr 23 '18 at 9:10
  • Sense is, in my experience, not a good guideline for making patent law decisions... – Keir Finlow-Bates Apr 23 '18 at 12:16
  • @KeirFinlow-Bates there is an inherent sense to law, it's just not "common sense". But you're right of course. I couldn't find out yet what happens with the terminal disclaimer if A is withdrawn. – DonQuiKong Apr 23 '18 at 12:39
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I think the following answers my question:

MPEP 804.1.b.iv

If the reference application has been abandoned or where the reference application has not matured to a patent and the provisional double patenting rejection is the only remaining rejection in the application the examiner should withdraw the provisional rejection. See MPEP § 1214.06.

So if B proceeds to allowance barring the provisional non-statutory double patenting rejection, and A hasn't issued yet, then the examiner should withdraw the provisional rejection. Which means B should technically, after PTA, have a normal 20 year term plus adjustments.

Subsequently, A will presumably have a nonprovisional non-statutory double patenting rejection applied to it, which can be overcome with a terminal disclaimer.

  • "is the only remaining rejection" + "As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. " for me means that you might not get to a point where that's the only remaining rejection if you don't submit a TD for them to keep examining your application. – DonQuiKong Apr 25 '18 at 7:44
  • "So if B proceeds to allowance barring the provisional non-statutory double patenting rejection" so basically, yes, but I don't know if you can realistically get there if arguments/amendments for non-obviousness or novelty are necessary. Maybe that would be a nice follow up question. "Do I get a final rejection if I leave the prov. non-stat. double pat. rejection open?" – DonQuiKong Apr 25 '18 at 7:45
  • I believe the examiner is required to respond to all arguments in a response to an office action. So if there's a provisional ODPR and say a 112, I could address the 112 with corrections, and argue that the ODPR is invalid because the moon is made of cheese. The 112 would then be withdrawn, and the moon is made of cheese argument would be rejected, but at that point the provisional ODPR is the only remaining rejection so it should be withdrawn anyway. And no need spending 360$ on filing and then petitioning for the withdrawal of a terminal disclaimer. – Keir Finlow-Bates Apr 25 '18 at 10:39
  • "I believe the examiner is required to respond to all arguments in a response to an office action." Hm, possibly. – DonQuiKong Apr 25 '18 at 12:25

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