Double-Patenting Rejections May Unfairly Put the Blame on Overlapping Researchers

By: Brent Nix
January 27, 2023

Talented inventors and researchers are in high demand, often among and between companies that compete with each other. As such, it is hardly unusual for such individuals to bring their ideas to different employers during their career. But when one inventor is among two or more groups of applicants seeking a patent for the same invention, U.S. Patent & Trademark Office (USPTO) examiners may view it as an attempt to surreptitiously extend patent protection and reject the applications as improper “obvious-type double patenting” (ODP). The threat of rejections on this basis can have severe repercussions for companies that share an overlapping inventor.

One Invention, One Patent

When the framers of the U.S. Constitution put quill to parchment, providing authors and inventors with exclusive, limited-time intellectual property rights was as important as coining money and declaring war. From a single clause under Article 1, Section 8, the principle of “one invention, one patent” became a cornerstone of our nation’s intellectual property jurisprudence.

Depending on the uniqueness of and demand for a particular invention, a patent can be tremendously valuable. Although monopolies are generally prohibited as impeding competition, a patent is essentially a monopoly that gives the holder an exclusive right to capitalize – but only for a set period.

The concept of “one patent” is straightforward; an inventor only receives exclusive, time-based protection over a specific, distinct article, method, or process. It’s important to note that “one invention” also means one set of inventors, which is especially true in corporate or university laboratory research settings.

Two Types of Double Patenting

There are two bases for rejecting more than one patent issuing from the same invention by the same applicants.

Under the U.S. Code, statutory double patenting enables USPTO examiners to reject a second or later application after granting a first or earlier patent for the same invention. Obvious-type double patenting is a judicially-created, non-statutory doctrine that allows examiners to reject a later application involving a minor variation of an earlier patented invention.

An examiner may invoke one or both types of rejections to deny a patent, such as when two applicant groups with a common inventor file for patent protection for their identical inventions. To overcome the rejections, applicants must be careful to explain the overlapping inventor’s involvement and the material differences in the invention.

Presence of an Overlapping Inventor

A recent matter in which our firm represented a genomic research organization illustrates how career changes and overlooked differences in subject matter can lead to improper statutory and ODP rejections.

Two university researchers and the institute that sponsored their research filed a patent application (Patent A) in March 2018, claiming priority to a provisional patent filed in August 2017. Pursuant to an accelerated Track 1 examination request, the USPTO issued a Notice of Allowance in August 2019 and granted a patent in November 2019.

Our client filed a separate application (Patent B) in December 2017 as a continuation-in-part of prior provisional applications filed in October 2015, February 2016, and April 2016, respectively. Because of the Track 1 request, Patent A was issued before the initiation of the client’s application.

Twelve inventors, along with six sponsoring organizations, are associated with Patent B, including one of the researchers behind Patent A. That single overlapping inventor was a graduate student in a lab during the period in which the subject matter of Patent B was developed. After completing her graduate studies, she joined the lab of one of the organizations where the subject matter of Patent A was invented.

Successfully Challenging Double Patent Rejections

Evidence showed Patents A and B were filed independently of each other by separate applicants and with no coordination as to timing and content of the subject matter. Also, Patent B’s applicants and applications exerted no control over the timing or rate of prosecution for Patent A. Equally important, Patent B claimed a specific method for targeting a new genus of polypeptides; Patent A centered on a species or subgenus of the genus claimed in Patent B.

We successfully argued that the USPTO improperly rejected Patent B, citing precedential case law holding that expiration dates control when determining whether a double-patenting issue exists. Because Patent B would be the first expiring patent (expiring in or around June 2036), followed by Patent A (expiring in or around March 2038), only the later filed Patent A could trigger the possibility of an unjustified double patent.

Further, we asserted that, despite the common ownership of Patent A and Patent B by the single overlapping inventor, the order of the filed applications undermined the reasoning of the double-patent rejection. Patent A was issued first solely because of the Track 1 expedited administrative procedure, not due to deceit or delay. In fact, Patent B is the earlier-filed patent of the two.

Career Advancing Researchers Beware

When a patent applicant is an individual inventor, or when researchers involved in an invention’s subject matter routinely apply for patents as a group, it would be easy for USPTO examiners to identify the overlap before deciding to reject an application on statutory double patenting grounds. Increased movement by researchers from academia into the workforce and then to better, higher-paying jobs are forcing examiners to pay closer attention to applicants’ roles. But upwardly mobile researchers should understand the nuances of the patent evaluation process and clarify how and when they participate in an invention’s subject matter and the level of control they exert over the substance and timing of a patent application.