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Posts tagged "Tags: Patent Law; Double Patenting Rejection; Intellectual Property Law; Infringement Test; Embodiment Test"

Responding to Statutory Double Patenting Rejections

Andrew - Blog Picture - Capture.PNGWhen was the last time you received a rejection of patent claims from the U.S. Patent Office that left you scratching your head... so much so, that you had to look up some law to figure out how to handle it? Recently, I had to respond to a statutory double patenting rejection. Notably, a statutory rejection is not the simple non-statutory double patenting rejection that you can address by submitting a standard terminal disclaimer form in which you promise you will not exercise the claims past the lifetime of the patent that is the subject of the rejection. Here is an example that reflects the situation I recently confronted: