In re Vogel
422 F.2d 438 (CCPA 1970)

  • Vogel received a patent on a way to process pork so it didn't spoil so quickly. He then came back to the patent office a few years later with a patent application for processing "meat and beef" with exactly the same method.
  • The USPTO rejected the patent. Vogel appealed.
    • The USPTO found that the two patents were effectively the same invention, and that there was no "patentable advance" of the later patent over the former. Therefore this was a case of double patenting.
      • Double patenting says a person can't get two patents on the same invention.
      • 35 U.S.C. 101 forbids granting a patent on an invention that has already been patented.
  • The CCPA affirmed in part and reversed in part.
    • The CCPA found that there were two tests for double patenting:
      • First, would it be possible to literally infringe the first patent without also literally infringing the second patent?
        • That's called statutory double patenting.
      • Second, does the claim in the second patent define merely an obvious variation of an invention disclosed and claimed in the first patent?
        • That's called obvious double patenting.
    • The CCPA found that in this case, Vogel's patents didn't literally infringe on each other because the first one was limited to pork, and did not include beef.
    • However, the CCPA found that several of the claims were just obvious variations, so those were rejected. However, some of the claims were not, so those were allowed.
      • Granting the "meat" patent would effectively extend the term of the "pork" patent, since "meat" is a generic term that includes pork.
      • "Beef" and "pork" are different, and the "beef" claim would not include "pork."
  • The main reason double patenting is not allowed is because it would result in an inventor maintaining a monopoly over an invention for longer than the 20 years of the original patent.
    • There is a loophole in 35 U.S.C. 102 that wouldn't stop a person from filing the exact same patent as they had already filed, within one year of that first patent issuing.
    • Sometimes, an inventor might want to claim obvious variants on an invention. If so, they can overcome the double patenting problem by filing a terminal disclaimer, which basically says that the inventor doesn't want the full 20 years on the new patent, they only want the term that is left on the old patent (thereby not extending the life of the patent beyond the original 20 years).
      • See 35 U.S.C. 253, and 37 C.F.R. 1.321(c).
      • In addition to truncating the term, you also have to maintain common ownership (you can't sell the patents separately, they are always tied together).