Double Patenting and Patent Time period Adjustment

by Dennis Crouch

The Federal Circuit just lately issued an necessary resolution in In re: Cellect, LLC (Fed. Cir. Aug. 28, 2023) relating to how Patent Time period Adjustment (PTA) interacts with terminal disclaimers and obviousness-type double patenting (ODP). This case establishes binding precedent {that a} terminal disclaimer cuts off any prolonged patent time period granted by PTA.

This holding contrasts with the court docket’s prior rulings relating to Patent Time period Extension (PTE), the place the prolonged time period is calculated from the disclaimed expiration date, not the unique expiration date. Thus, PTE extends past a disclaimed time period, whereas PTA doesn’t.

This outcome was anticipated by many patent specialists, though some within the pharmaceutical trade had pushed for PTA to increase past disclaimed phrases equally to PTE. In the long run, the statutory language expressly addressing disclaimers within the context of PTA proved decisive. This precedent will apply to all patents already in-force in addition to these issued sooner or later.  Thus, candidates will need to fastidiously think about PTA and terminal disclaimer technique for patent households.

If I had been the choose, I’d think about eliminating non-statutory double patenting. I count on the doctrine would have by no means developed below our present patent time period calculation and is as an alternative a vestige of historical past.

Thousands and thousands of U.S. patents are tied to a member of the family patent by way of terminal disclaimer and its accompanying promise of continued widespread possession.  A terminal disclaimer typically disclaims any patent time period that might lengthen past the expiration date of the complete statutory time period of the reference patent and are typically required for the USPTO so as to overcome a rejection for obviousness-type double patenting.

Obviousness-type double patenting (ODP) is a judicially created doctrine that forestalls an inventor from acquiring a second patent for claims that aren’t patentably distinct from claims in a primary patent. The doctrine has its acknowledged origins in 35 U.S.C. 101, which supplies that an inventor might get hold of “a patent” (singular) for an invention.  The obviousness query usually focuses on prior-art as required by Part 103.  ODP doctrine doesn’t think about prior artwork however quite non-prior-art patents (or purposes) with overlapping inventorship.

Though the statutory hook of Part 101 focuses on one-patent-per-invention, the coverage concern can be extremely centered on guaranteeing {that a} patentee can not get hold of a number of patents on a single invention so as to improperly lengthen the patent time period.  This downside is essentially historic — stemming from the time when patent time period was decided based mostly upon the date of issuance and previous to publication of purposes.  These transformations have considerably restricted gamesmanship potential.  Nevertheless, within the patent-term-adjustment world, it’s doable to increase a patent’s time period by a number of years in conditions the place the patent applicant has a profitable PTAB enchantment.

ODP is meant to forestall an inventor from securing a second, later-expiring patent for small modifications or apparent variations of the identical invention claimed in an earlier patent. The aim is to forestall an unjustified extension of the time period of exclusivity for the invention past the unique patent time period. ODP is mostly utilized when two generally owned patents share overlapping or apparent claims however have completely different expiration dates.  The courts have concluded {that a} terminal disclaimer by the patentee together with a binding promise of ongoing co-ownership serves as an answer — permitting each patents to difficulty.  The result’s successfully a single patent with a single patent time period designed to stopping potential harassment from a number of assignees asserting generally owned patents overlaying the identical invention.

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The case at hand entails a number of Cellect patents associated to picture sensors in private digital assistants and telephones.  The patents are all a part of a household and all declare precedence to the identical unique software. The patents additionally acquired various Patent Time period Adjustment (PTA) to increase their phrases as a consequence of USPTO delays throughout examination.

After Cellect sued Samsung for infringement, Samsung requested ex parte reexaminations of Cellect’s patents asserting they had been unpatentable for obviousness-type double patenting (ODP) over earlier expiring patents within the household.  The examiner agreed the claims had been unpatentable for ODP within the reexaminations. The Board affirmed the unpatentability findings.

On enchantment, Cellect argued that PTA must be obtainable past the disclaimed portion of the time period — noting that the judge-made-law couldn’t overcome the statutory assure.  On enchantment, nonetheless, the Federal Circuit affirmed the Board and rejected Cellect’s arguments.  The clincher right here is that Congress recognized disclaimers throughout the PTA statute, stating: “No patent the time period of  which has been disclaimed past a specified date could also be adjusted below this part past the expiration date specified within the disclaimer.”  35 U.S.C. 154(b)(2)(B).   In different phrases, Congress seems to be stating that PTA  can not lengthen a patent time period past what was disclaimed — however that is precisely what Cellect was asking for.  The appellate panel additionally agreed with the PTAB that Cellect acquired an unjustified timewise extension and a terminal disclaimer was required to make sure widespread possession because the later patents had been clearly apparent variants of the unique.  An in any other case outcome would successfully confer PTA on the sooner issued patents although they weren’t entitled.

In abstract, the unjustified extension stemmed from the challenged claims extending past the expiration of the one member of the family (‘036) that didn’t obtain PTA. This might have been resolved with a terminal disclaimer, however none had been filed.

The choice thus establishes how PTA granted below 35 USC 154 must be factored into the ODP evaluation — and the outcome doesn’t favor patent households.