Patent Baristas

Greg Aharonian at Internet Patent News Service posted a note about a possible increase in double-patenting rejections as the U.S. Patent Office. In a complaint he received, a reader questions whether this is an orchestrated implementation of “directives to frustrate patent applicants to achieve their misguided purpose.”

As an example, the reader noted that the Patent Office seems to be (undeservedly) dishing out more statutory double patenting rejections. Although the example dealt with claims directed to computer readable storage media and accompanying systems and methods, this can also be a problem in the bio/pharma where drug companies are constantly trying to file patent applications on continued changes and improvements in order to capture or retain market share.

Basically, the law provides that an applicant may only obtain a single patent for an invention. 35 USC 101 provides:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Thus, a statutory double patenting rejection comes up when the applicant tries to claim the exact same invention. The purpose, of course, is to prevent a patentee from receiving multiple patents for the same invention and thus gaining an illegal extension of patent term. Therefore, a pharmaceutical company can only be able to prevent generic entry for a period of 20 years from the filing date of the application (albeit with certain extensions available).

One quick test of whether or not there’s a problem is to ask:

1. Is there an embodiment that falls within the scope of one claim, but not the other?
2. Could one claim be literally infringed without literally infringing the other claim?

Since bio & pharma patents seem to be under seige, I’m curious if others have experienced an uptick in statutory-type double patenting rejections?

Let us know.

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