What are the two main ways to overcome a double-patenting rejection?

The two main ways to overcome a double-patenting rejection center around addressing the issue of the claims in relation to prior patents. Canceling claims directly addresses the overlap in claimed inventions between two related patents, thus eliminating the double-patenting issue. This approach clarifies that the application does not include claims that are not distinctly different from those already patented.

Filing a terminal disclaimer is another critical method, as it allows the applicant to effectively argue that despite the similarities, they are willing to limit the term of the new patent in relation to the existing patent. This guarantees that the two patents—although they may cover similar inventions—will not have overlapping effective dates, thus alleviating concerns about double patenting.

Other options involve actions that do not directly address the core issue of double patenting as effectively. For instance, adding new claims or modifying existing ones might not resolve the fundamental overlap that leads to a double patenting rejection. Similarly, seeking a court ruling or changing patent ownership does not inherently eliminate double-patenting concerns, nor do submitting additional prior art or evidence directly address the two patents' substantive similarity. Thus, the correct rationale revolves around the direct actions taken to resolve the rejection.