35 U.S.C. § 121
Divisional applications
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 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.
Notes of Decisions
Cited in 160
cases (9 in the last 5 years), 1953–2025 · leading case: Boehringer Ingelheim Int'l GmbH v. Barr Labs., Inc., 592 F.3d 1340 (Fed. Cir. 2010).
Boehringer Ingelheim Int'l GmbH v. Barr Labs., Inc., 592 F.3d 1340 (Fed. Cir. 2010). “This is a patent infringement case involving the effectiveness of a terminal disclaimer to overcome obviousness-type double patenting and the safe-harbor provision of 35 U.S.C. § 121 . Boehringer Ingelheim International GmbH and Boehringer Ingelheim Pharmaceuticals, Inc.”
Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340 (Fed. Cir. 2009). “The PTO examiner stated that, under 35 U.S.C. § 121 , restriction to one of the following inventions was required: I.”
Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353 (Fed. Cir. 2008). “The district court held that, under 35 U.S.C. § 121 , the '165 patent could not be used as prior art against the '068 patent.”
Studiengesellschaft Kohle Mbh, as Tr. for the Max-Planck-Institut Fur Kohlenforschung v. N. Petrochemical Co., 784 F.2d 351 (Fed. Cir. 1986). “In response to SGK’s argument that the two patents were obtained because of a restriction requirement by the patent examiner, the court held that 35 U.S.C. § 121 did not insulate the ’698 process patent from double patenting because the catalyst of the ’115 patent and the…”
St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369 (Fed. Cir. 2013). “” ACI appeals three of the district court’s rulings: (1) that the safe-harbor provision of 35 U.S.C. § 121 protects the Janzen patent from invalidity due to double- patenting; (2) the construction of key terms in the Janzen patent; and (3) that ACI was not entitled to JMOL that…”
Baxter Int'l, Inc., & Baxter Healthcare Corp. v. McGaw Inc., Defendant-Cross, 149 F.3d 1321 (Fed. Cir. 1998). “The PTO entered this amendment and on January 13, 1989, the PTO issued a restriction requirement pursuant to 35 U.S.C. § 121 . The January 13, 1989, Office Action stated that there were a total of four separate inventions defined by the ’414 application.”
Union Carbide Corp. v. Dow Chem. Co., 619 F. Supp. 1036 (D. Del. 1985). “24 Carbide argues that where such a requirement to restrict has been made, 35 U.S.C. § 121 bars reliance upon the patent application or the patent itself to support a double patenting rejection of its divisional offspring.”
Amgen, Inc. v. F. Hoffmann-La Roche Ltd., 581 F. Supp. 2d 160 (D. Mass. 2008). “In addition, because the order in which Amgen’s patents issued was a function of a restriction requirement imposed by the PTO, and because the claims at issue are consonant with those restrictions, the claims of the '933, '422, and '349 patents are immune from ODP over the '008…”
Pfizer, Inc. v. Lee, 811 F.3d 466 (Fed. Cir. 2016). “35 U.S.C. § 121 . Generally, a restriction requirement would be considered an office action under Section 132 because it informs the applicant of reasons why its claims are considered to be directed to separate inventions.”
Bristol-Myers Squibb Co., & Rsch. Corp. Tech., Inc. v. Pharmachemie B.V., 361 F.3d 1343 (Fed. Cir. 2004). “B The double patenting issue in this case turns on whether Bristol-Myers is entitled to invoke section 121 of the Patent Act, 35 U.S.C. § 121 , as a defense against the claim of double patenting.”
Nicholas v. Perricone, M.D. v. Medicis Pharm. Corp., Defendant-Cross, 432 F.3d 1368 (Fed. Cir. 2005). “If the PTO had entered a restriction requirement under that hypothetical situation, 35 U.S.C. § 121 would have barred a double patenting rejection.”
Gerber Garment Tech., Inc. v. Lectra Sys., Inc. & Lectra Sys., S.A., 916 F.2d 683 (Fed. Cir. 1990). “” See 35 U.S.C. § 121 . Gerber elected to prosecute the former claims and the application issued as the (now expired) ’492 patent on February 17, 1970.”
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