MPEP 804
...
"There are generally 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 is the "nonstatutory-type" double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent. Since the doctrine of double patenting seeks to avoid unjustly extending patent rights at the expense of the public, the focus of any double patenting analysis necessarily is on the claims in the multiple patents or patent applications involved in the analysis.
The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982) (citing Chisum, Patents, § 9.04(2)(b) (1981) ). A terminal disclaimer, submitted in compliance with 37 CFR 1.321(c) or (d) to overcome a double patenting rejection, includes a provision that the patent or any patent issuing from the application is only enforceable for and during such period that it is owned by the same party (or parties) that owns the other patents or applications, identified in the terminal disclaimer, that claim obvious variations of one invention. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767 (citing Chisum, Patents, § 9.04(2)(b) (1981)).
Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of "obviousness," or a two-way determination of "obviousness." It is important to note that the "obviousness" analysis for "obviousness-type" double-patenting is "similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103." In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed. Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on the equitable principle against permitting an unjustified timewise extension of patent rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also subsection II.B.6, below."
...
重複專利的核駁意見有兩種：(1)"相同發明(法定)"，這是基於35U.S.C.101規定，一個發明獲得一個專利，因此應駁回相同發明後申請者；(2)"非法定重複專利(nonstatutory-type double patenting)"，這是基於公共政策的司法原則（公平原則／equitable principle），當第二件專利與第一件專利之間沒有專利性區隔時，用以防止不當延長專利權的核駁意見。"非法定重複專利"核駁的另一立意是防止被告侵權者被反覆以相似的專利提起訴訟。
35 U.S. Code § 101 - Inventions patentable
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.
以上第(1)種重複專利態樣是沒法救的（除非...修改Claims...這是其他議題），後申請案就是會被駁回，甚至不是新穎性或進步性，而是基於35U.S.C.101的駁回理由。
第(2)種重複專利態樣則可以基於37 CFR § 1.321(c)或(d)提出「terminal disclaimer/終權聲明」克服，條件是"非法定重複專利"下的多件專利是由相同人擁有，即可對這些彼此有非法定重複專利情況的專利/申請案提出terminal disclaimer後克服非法定重複專利的核駁意見。
根據上述規定，所述"non-statutory double patenting"並非"the same invention"，而是一種"obviousness-type double patenting"，中文直接翻譯可以是「顯而易見式重複專利」，這個判斷分析相似35U.S.C.103審查，但沒有一定是用35U.S.C.103的標準。
編按，就是，接過的non-statutory double patenting，通常就是先提到本案相對前案不具非顯而易見性，證明兩者不同，但之間的差異為顯而易見，又因為本案與前案為相同申請人，因此發出non-statutory double patenting rejection。
案例：審查意見先引用申請人自己的前申請案證明本案不具非顯而易見性（稱＂provisional rejection＂），之後再提出重複專利核駁意見，並說明可運用Terminal Disclaimer克服。
37 CFR § 1.321 - Statutory disclaimers, including terminal disclaimers.
...
(c) A terminal disclaimer, when filed to obviate judicially created double patenting in a patent application or in a reexamination proceeding except as provided for in paragraph (d) of this section, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
(3) Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.
(d) A terminal disclaimer, when filed in a patent application or in a reexamination proceeding to obviate double patenting based upon a patent or application that is not commonly owned but was disqualified as prior art as set forth in either § 1.104(c)(4)(ii) or (c)(5)(ii) as the result of activities undertaken within the scope of a joint research agreement, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or be signed in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
(3) Include a provision waiving the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the patent or any patent granted on the application which formed the basis for the double patenting, and that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the patent, or any patent granted on the application, which formed the basis for the double patenting are not separately enforced.
...
Ron
沒有留言:
張貼留言