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If the USPTO issues a restriction and the patentee files a divisional application, can the USPTO subsequently issue a double patenting rejection?

1/8/2017

 
No, once the Patent Office determines that a patent application contains two separate and distinct inventions, the parent application and its subsequently-filed divisional application are immune from a challenge of double-patenting. 35 U.S.C. 121. If the law were otherwise, this would be manifestly unfair to the patentee: the USPTO could first issue a restriction, claiming the  patent application contained two "separate and distinct" inventions. This would require the patentee to withdraw a subset of his claims and file them in separate divisional application. Then the USPTO could reject the divisional application in view of the parent application on the grounds of double-patenting.

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