Legal Definitions - duplicate-claiming rejection

A duplicate-claiming rejection occurs in patent law when a patent examiner refuses a patent application because the claims made in the application are considered to be substantially identical or indistinguishable from claims already granted in a previously issued patent. This type of rejection is designed to prevent an inventor from obtaining multiple patents for essentially the same invention, which would unfairly extend their period of exclusive rights or create confusion regarding the scope of protection.

• Example 1: Self-Duplication in Subsequent Filings

  An inventor, Dr. Aris, successfully obtains a patent for a novel method of synthesizing a specific chemical compound. A year later, Dr. Aris files a new patent application for a "kit" that includes the exact same chemical compound and describes the identical synthesis method, with claims that are virtually indistinguishable from those in her first patent, just rephrased slightly.

  The patent examiner would issue a duplicate-claiming rejection for Dr. Aris's second application. Even though she is the same inventor, the claims in her new application are too similar to those already protected by her first patent, attempting to secure a second period of exclusivity for the same inventive concept.

• Example 2: Overlapping with Existing Prior Art

  A startup company, BioGen Innovations, invents a new type of diagnostic test for a particular disease and applies for a patent. During the examination process, the patent office discovers that a larger pharmaceutical company, MediCorp, was granted a patent five years prior for a diagnostic test that uses the identical biological markers and achieves the same diagnostic outcome through the same procedural steps, as described in BioGen Innovations' claims.

  BioGen Innovations' application would face a duplicate-claiming rejection. The claims they are trying to secure are already covered by MediCorp's existing patent, meaning BioGen Innovations is attempting to claim an invention that has already been patented by someone else, preventing them from obtaining a new, overlapping monopoly.

• Example 3: Issues in Continuation Applications

  Ms. Davies invents a unique ergonomic office chair with several adjustable features. She files a patent application with broad claims covering the general design and mechanism. Later, she files a "continuation" application, which is a common practice to pursue additional claims related to the original invention. However, the claims in this continuation application are found to be almost word-for-word identical to some of the claims already allowed in her first, parent application.

  The patent examiner would issue a duplicate-claiming rejection for the continuation application. While continuation applications are meant to explore different facets or narrower claims of an invention, they cannot simply repeat claims already granted in the parent patent. This prevents Ms. Davies from effectively getting a second patent for the exact same scope of protection she already possesses.