Let's just say I have an invention and I would like to have 60 patent claims to cover the invention properly.

I file the application with 30 claims (3 independent and 27 dependent) and my patent is granted.

Now, can I file a continuation for the remaining 30 claims (3 independent and 27 dependent)?

It seems like double patenting provision applicable here. That's why I'm asking.

According to Wikipedia,

The United States has two types of double patenting rejections. One is the "same invention" type double patenting rejection, based on 35 U.S.C. § 101, which states in the singular that an inventor "...may obtain a patent." The second rejection type precludes what is referred to as "obviousness-type" or "nonstatutory" double patenting.


1 Answer 1


Yes, but it depends upon the claims. If the claims in the continuation are different enough from the claims in the granted patent there might be no issue of double patenting at all. If the examiner asserts that you do have double patenting it will most likely be the judicially created "obviousness" type. You can argue that the examiner is wrong or you can overcome it with a terminal disclaimer.

If there was a restriction requirement that caused you to cancel a subset of the claims, your continuation can be labeled a "divisional" if it picks up those dropped claims. In this case there can be no double patenting due to a safe harbor caused by the examiner saying the were too different and issuing the restriction. To get this safe harbor you need to label it a divisional.

Like everything in patent law, there are details that can trip you up.

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