An obviousness-type double-patenting rejection occurs when an individual attempts to obtain a patent for something that is excessively similar to something they already hold a patent for. This practice of seeking two patents for the same thing is prohibited as it is unfair to others who may wish to utilise or enhance the invention. For instance, if someone already possesses a patent for a toy car and then seeks a patent for a toy truck that closely resembles it, the patent office would reject the application due to its significant similarity to the existing patent.
The concept of obviousness-type double-patenting rejection refers to the determination made by a patent examiner that a patent application is not eligible for patent protection because it is an obvious modification of another invention already patented by the same inventor. This rejection is a result of judicial interpretation. For instance, if an inventor seeks to patent a slightly different phone case after already obtaining a patent for a similar phone case, the patent examiner may reject the new application on the grounds that the invention lacks substantial differentiation from the previous patent. Similarly, if an inventor applies for a patent on a chair that closely resembles a chair they have already patented, the patent examiner may reject the new application as it is deemed an obvious variation of the previous patent. These examples highlight the requirement for an invention to possess significant differentiation and not be readily apparent to someone skilled in the relevant field. In other words, minor modifications to an existing invention are insufficient to secure a new patent.
An OTDP rejection occurs when a patent application claims subject matter that is obvious in light of another patent or application owned by the same inventor or assignee.
While a regular obviousness rejection involves comparing the claimed invention with prior art references, an OTDP rejection focuses on comparing the claimed invention with another patent or application owned by the same entity.
Yes, an OTDP rejection can be overcome by demonstrating that the claimed invention is patentably distinct from the prior patent or application, or by filing a terminal disclaimer to overcome the rejection.
A terminal disclaimer is a legal document filed with the patent office that disclaims any right to the term of the patent that extends beyond the expiration date of the prior patent or application.
Yes, an OTDP rejection can be avoided by filing a divisional application before the issuance of the prior patent or application, or by filing a request for a patent term adjustment.
A divisional application is a separate patent application that is filed to claim subject matter that was originally disclosed in a parent application but was not claimed in the parent application.
Yes, an OTDP rejection can be raised as a defence during patent litigation to argue that the asserted patent is invalid due to obviousness-type double-patenting.
No, an OTDP rejection can only be raised during the examination process of a patent application and cannot be used to challenge the validity of an already granted patent.
Yes, there are certain exceptions to the OTDP rejection, such as when the prior patent or application is commonly owned with the claimed invention or when the prior patent or application is subject to a terminal disclaimer.
Yes, an experienced patent attorney can provide guidance and assistance in overcoming an OTDP rejection by analyzing the prior patent or application, identifying patentably distinct features, and preparing arguments or amendments to overcome the rejection.
This site contains general legal information but does not constitute professional legal advice for your particular situation. Persuing this glossary does not create an attorney-client or legal adviser relationship. If you have specific questions, please consult a qualified attorney licensed in your jurisdiction.
This glossary post was last updated: 17th April 2024.
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