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Obviousness-Type Double Patenting Can Apply Without Common Ownership

By Irah H. Donner and Matthew Siegal
March 29, 2013

In In re Hubbell, 2013 WL 828475 (Fed. Cir. 2013), the Federal Circuit held that obviousness-type double patenting applies when conflicting patent applications share common inventors, even if they lack common ownership. That is, complete identity of inventors or common ownership is not required for the Patent Office to impose an obviousness-type double patenting rejection. Moreover, the Federal Circuit denied Hubbell's request to file a terminal disclaimer, finding that a terminal disclaimer is only effective when the application and the conflicting patent are commonly owned.

In a dissent, Judge Pauline Newman argued that double patenting does not apply when the application and patent are of separate ownership and have separate inventive entities. Rather, the appropriate examination path is on the merits of the invention, i.e., whether the claims are non-obvious in view of the prior art or through the interference/derivation procedures.

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