The Trap Of Obviousness-Type Double Patenting When The Reference Case Has Different Ownership

An obviousness-type double patenting rejection ("ODP") over a reference patent or application with a different ownership entity creates a trap for the unwary: the Patent Office can make an ODP rejection over a patent issued to a co-owner or a joint inventor, but a terminal disclaimer cannot be filed to overcome the ODP rejection because the ownership entity is different¹. There are at least three scenarios involving this trap. First, and simplest for the applicant, when the reference case is the second-filed application, the ODP rejection is provisional and can be removed under MPEP § 804(I)(B)(1)(b)(i) (the "(A)" scenario). Second, when the reference case is the first-filed application or patent ("(B)"), the only option to overcome the rejection is to demonstrate that the claims are patentably distinct, i.e., claim a different invention.² And third, when the reference case is the second-filed patent ("(C)"), the options to overcome the rejection are to