Should you worry about a provisional double patenting rejection when appealing? A provisional double patent rejection is where an examiner makes a double patenting rejection against another patent application with overlapping ownership of a subject application. Because the application has not yet issued, the rejection is provisional.

An applicant can still file a terminal disclaimer (assuming all of the requirements are met) against another pending application. However, many applicants request that provisional double patent rejections be held until all of the other issues are in the case are addressed, because the other pending application may not ever issue as a patent or be amended in a way to avoid the double patenting issue in the first place.

Many times, examiners make provisional double patenting rejections but do not keep them up to date as prosecution progresses and so it is up to the applicant to point out any relevant change in circumstances. However, once a case heads to appeal, much time can pass. By the time the PTAB gets to the appeal and reviews the rejection, more often than not the underlying claims have changed in both the application on appeal and the application upon which the provisional double patenting rejection is based. This usually results in the PTAB avoiding the issue as they are unlikely to do the examiner’s work in the first instance.

Here is an example: 14/046,411:"

So, if you find yourself in this situation where you have won all of the issues on appeal except for a provisional double patenting issue and you do not want prosecution re-opened, you can file a Terminal Disclaimer after having received the PTAB’s decision.