Rule Review - Only A True Divisional Can Enter The Safe Harbor Of 35 U.S.C. § 121

For centuries, alchemists attempted to transform base metals such as lead into gold. Their success against the laws of nature laid out of their reach, but one has to admire the creativity and determination of their efforts. After all, the potential rewards for success would have been enormous.

The same is true for the U.S. divisional application, which carries a unique and potent protection known as the "safe harbor" provision under 35 U.S.C. § 121:

If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 [claiming benefit of priority] it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention. (Emphasis added.)

The true divisional application is therefore noble, like gold, in that it has special and valuable properties. The true divisional is immune from having its parent used as a reference against it, which notably could occur in an obviousness-type double-patenting (OTDP) rejection.

As is well known, the judicially made OTDP doctrine seeks to prevent the unfair extension of patent exclusivity beyond the term of a single patent owned by a single patentee. The public policy behind this doctrine was originally concerned with the unfair extension of patent term when a U.S. patent had a term of seventeen years from its issue date. Today, with a twenty-year term from the date of filing, this concern is less pressing.1 A terminal disclaimer, nevertheless, requires that a later patent containing claims subject to an OTDP rejection be commonly assigned throughout its life with the parent in order to be enforceable. This aspect of the OTDP doctrine protects the public from having to...

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