Obviousness-Type Double Patenting May Exist When There Is Neither Common Ownership Nor Common Inventorship

Addressing an obviousness-type double patenting rejection, the U.S. Court of Appeals for the Federal Circuit upheld a decision by the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), finding that obviousness-type double patenting can exist even when there is no common ownership.  In Re Hubbell, Case No. 11-1547  (Fed. Cir. Mar. 7, 2013) (O'Malley, J.) (Newman, J, dissenting).

This case arose from an appeal from the decision of the Board affirming an examiner's final rejection of all pending claims of a patent application for obviousness-type double patenting.  An obviousness-type double patenting rejection prohibits the issuance of claims in a second patent that are not patentably distinct from claims in a first patent.  The rejection works to prevent an unjustified extension of the right to exclude and prevents multiple infringement suits by different assignees asserting essentially the same patented invention.