Double Patenting Problems when Inventors Move to a New Employer

By Dennis Crouch

In re Hubbell (Fed. Cir. 2013)

Hubbell is the third element of a trio of recent decisions that remind-us that conception and inventorship will remain critically important even after the US patent system fully-shifts to the first-to-file regime. See Dawson v. Dawson and Rubin v. General Hospital Corp. In thinking about these cases, innovative companies may want to consider their employment agreements and their rights to patents associated with post-employment developments.

US Patent law has always recognized inventors as the original patent owners. Conception of the invention imbues the inventor with an inchoate patent right that can then be fully realized by successfully completing the patenting process. As Judge Reyna writes “Inventorship is perhaps the most fundamental question in patent law. The instant an inventor conceives her invention is the moment in which vests her right to a patent, thus perfecting her constitutional right to exclude.” (Judge Reyna in Dawson writing in dissent). Ownership of that inchoate right is usually transferred to the inventor’s employer as required by the individual employment contract. Without such a contract, the inventor retains ownership rights. Although the America Invents Act shifts some weight away from the primacy-of-invention, it does nothing to change this fundamental precept that rights are created at conception and held by the inventor until transferred.

As was the case in Dawson, Hubbell involves a situation where the inventor moved from one employer (Caltech) to another (ETH Zürich). His first-filed patent application (as a joint-inventor) is owned by Caltech and the second-filed application (as a joint-inventor with different joint inventors) is owned by ETH Zürich. It turns out that ETH Zürich did a better job of getting a patent and that patent issued in 2002. The Caltech patent application is still pending and is the subject of this appeal.

Of the two applications, the Caltech application was both the first invented and first filed. That means that the later ETH Zürich cannot serve as prior art. However, the PTO rejected the Caltech application under the doctrine of obviousness-type double patenting. The doctrine of obviousness-type double patenting is not statutory but instead a judicially created equitable doctrine Normally, this type of rejection is not fatal because the patentee can file a paper known as a terminal disclaimer that both (1) disclaims any term of enforcement that extends beyond the other patent and (2) agrees to that both patents will be co-owned throughout their lifespan. The problem here is that the patents are not co-owned and Caltech cannot make that promise.

Caltech argued that the double patenting rejection should not apply because the two applications have different owners and different inventors. As an alternative, the university argued that the equitable solution is to allow it to file the terminal disclaimer without the co-ownership promise.

On appeal, however, the Federal Circuit affirmed the PTO’s decision – holding that obviousness type double patenting applies and that Caltech cannot receive its patent without linking ownership. Writing for the 2-1 majority, Judge O’Malley highlighted multiple-suit harassment problem that served as the originating policy concerns for the limiting doctrine – writing that “the MPEP standard is consistent with the rationale we have used to support application of obviousness-type double patenting rejections.”

Judge Newman dissented – arguing that obviousness type double patenting is not available when a patent has different owners, different inventorship, and no joint development agreement. And here, Newman argues, that we have different inventorship because the lists of joint inventors are not identical.

The court today not only finds “double patenting” when there is neither common inventorship nor common ownership, but having so found withholds the standard remedy of the terminal disclaimer, and simply denies the application. This novel ruling is contrary to statute and precedent, with no policy justification for changing the law.

Under Judge Newman’s theory the patent should issue on its merits or perhaps be subject to an interference or derivation proceeding.

= = = = =

The panel notes that the reason Caltech’s application took so because the university was playing games with continuation practice and claims that are almost identical to those at issue now were allowed back in 2003. Instead of taking that patent, Caltech filed a continuation and abandoned that allowed application.

= = = = =

We do have a (slightly) open question moving forward as to whether obviousness type double patenting remains as a viable doctrine following the AIA.

89 thoughts on “Double Patenting Problems when Inventors Move to a New Employer

  1. I note that Malcolm already recommended just this in his post at 04:14 pm above.

    PTO, Federal Circuit, you are wrong. If the Zurich species patent is patentable over the Cal Tech genus patent, there is no problem of multiple lawsuits, etc., by two different owners over the “same” invention. Whether it is the same invention can be tested in the PTO through a reexamination of the species patent. If the species is obvious over the genus disclosure of the earlier-filed Cal Tech patent, those claims will be cancelled or limited in some non obvious fashion.

  2. Margaret Thatcher Helped Invent Soft-Serve Ice Cream. “As a chemist for food manufacturer J. Lyons and Co. in the 1940s, Thatcher was part of the British research team that made soft-serve ice possible,”

    Read more: link to businessinsider.com

  3. Judith, if the PTO issued the Cal Tech patent and then filed a reexamination of the Zurich patents, one could determine whether the Zurich patents were the same or different inventions. If the same, the Zurich patents will be found obvious, as they are species of the genus claimed in the Cal Tech patent. If however, there are non obvious over the Cal Tech patent, then they are different inventions.

    It turns out that the reason Cal Tech lost here is that they had claims allowed and did not pay the issue fee, but filed a continuation. That is the real reason for this decision. But, IMHO, that reasoning applies only to prevent extending term when the same owner is playing games — but since that era is now gone with 20-year from filing term, there is no remaining justification for the rule that delays must entirely be the PTOs fault.

  4. speaking of ‘froth,’ AAA JJ commenting about me posting twice – when he posts four times.

    How can you not love this stuff? It works for me.

  5. Come on guys. anon is hurt.

    LOL – not at all, MaxDrei. Not at all.

    I love the ability to provide the public service of noting Malcolm’s typical vacuous posts, like “Makes no sense.” You guys keep me happy with your banalities (or more to the point, happy that I can lay the smackdown on you for your banalities), all the while playing spin the tale and accuse others of that which you do.

    Sure, I wouldn’t mind some substantive discussion of patent law now and then, but your frivolous comments add a little froth to my day.

    Thanks!

  6. Come on guys. anon is hurt. He goes to a lot of time and trouble to “point out” to us all, that:

    “……… the judges have some non-meaningless rationale for acting as they have done……”

    and for that deep contribution, informed by his decades of experience, he gets no thanks?

  7. Easy there Judith.

    What seems wrong or not is not the point of my posts. Way too much jumping to conclusions going on here. Believe me, I am no fan of the ‘common law’ approach to writing any patent law. If you go back and read what I am actually saying, I am pointing out that the judges have some non-meaningless rationale for acting as they have done. Is it the best? I have made no comment to that question. Is it the fairest? ditto.

    Let’s pay attention people.

  8. How can you justify the junior filer getting a patent while the assignee of the original inventor does not? At best, this is a case for interference. But killing a patent with double patenting seems wrong.

  9. Please begin…

    ANYTHING related to patent law and NOT your political B$ is welcome.

    Short of that, SILENCE is more welcome than the political B$.

    Think you can handle that?

  10. From the quantity of times I hand your head back to you, I am more than sure that your line(s) are highly ineffective.

    Better trolling please.

  11. Should read,
    “Double patenting arose as a judicial exception when the inventorship was the same. Presumably an interference would result in the same invention dates. Thus the courts have deemed the first to issue patent valid and the second to issue patent invalid. This doctrine is based upon estoppel, an equitable principle. The inventor gets only one patent, and he chose which one.”

  12. Malcolm, you have this correct and the Federal Circuit obviously is wrong.

    In general, the patent office cannot issue two patents on the same invention. If it issues a second patent on the same invention as appears in another later-filed patent, second-filed patent is invalid, unless, of course the second to file patent requests an interference.

    Double patenting arose as a judicial exception when the inventorship was the same. Presumably an Interference would result in the same invention dates. Thus the courts have deemed the first issue patent valid patent and the second issue patent invalid. This doctrine is based upon estoppel, an equitable principle.

    This estoppel principle was extended to other patents from the same company when Congress began accepting, ownership from prior art under sections 102 (e), (f), and (g).

    Thus we have double patenting when the inventorship is the same, or when there is common ownership.

    When neither is present, as I said before, one of the two patents is invalid.

  13. That line doesn’t work for Malcolm. Why do you think it will work for you?

    Better trolling please.

  14. “What the sam hill are you talking about…”

    I’m talking about you, oh mighty KING OF REPLY TO SELF (TM).

  15. What the sam hill are you talking about, Mr. Blue-Sky-Is-Falling-Who-Also-Just-Recently-Replied-To-His-Own-Post?

    LOL, carry on, indeed.

  16. “I am not ‘peeved’ that ‘no one attempts to engage me in conversation.’”

    Right. You can always talk to yourself. And do quite frequently.

    Carry on.

  17. That thought so funny you had to post it twice?

    LB is entirely correct. You make no sense. You’re the emptiest wagon on the internet.

  18. That thought so funny you had to post it twice?

    LB is entirely correct. You make no sense. You’re the emptiest wagon on the internet.

  19. That thought so funny you had to post it twice?

    LB is entirely correct. You make no sense. You’re the emptiest wagon on the internet.

  20. That thought so funny you had to post it twice?

    LB is entirely correct. You make no sense. You’re the emptiest wagon on the internet.

  21. “So it makes sense.”

    contrast with

    “Makes no sense.”

    one step at a time…

    Pay attention to what I am disagreeing with (a vacuous and unfounded post) and not with what I may agree with (judicially created patent law has serious constitutional problems).

  22. “So it makes sense.”

    contrast with

    “Makes no sense.”

    one step at a time…

    Pay attention to what I am disagreeing with (a vacuous and unfounded post) and not with what I may agree with (judicially created patent law has serious constitutional problems).

  23. You are absolutely correct. Keep in mind that non-statutory obviousness type double patenting does not prevent ALL multiple lawsuit harassment. If a non-obvious species claim is patented by a completely unrelated entity (i.e., after the generic claim is issued), there is nothing requiring them to join with the holder of the generic claim. The only difference between that scenario and the hypothetical one represented by Hubbell is the presence of a common inventor, who never owned the technology in the practical sense. I say “hypothetical” because the facts in this case were less than ideal, as you pointed out.

  24. Problem is that the judiciary has on occassion looked the other way. That’s why this type of DP rejection is differentiated from the statutory type of DP (which is NOT even at issue in this case).

    You’re very skilled at arguing about issues that nobody else is contesting. Yes, we’re all aware that obviousness-type double patenting is different from statutory double patenting, and that the former is judicially created.

    To boldly proclaim “makes no sense” is itself nonsensical. There is sense here. Of course, there are clear problems with the way the sense is invoked (in my view in an illegal manner – given that the power to make patent law is expressly given to the legislature and not the judiciary).

    So it makes sense, but there are clear problems with the way the sense is invoked? I see. That works out very nicely for you – you can disagree with MM (or anyone else in his “circle”) and secretly agree , at the same time.

  25. this particular law – he has merely noted its existence

    What “particular law” are you referring to, anon?

  26. As a patent attorney, I often find myself disagreeing with MM. In this case, I am a little surprised to find myself in complete agreement. This is a very bad case. The example of BigBiz stealing the invention from SmallBiz could happen – the parties could also be reversed.

    One of the biggest problems with the Fed. Cir. is that they do not have many Judges which actually practiced patent law before starting to rule on patent law.

  27. but they have to find legal authority for what they’re doing in the statute.

    I agree 100%.

    Problem is that the judiciary has on occassion looked the other way. That’s why this type of DP rejection is differentiated from the statutory type of DP (which is NOT even at issue in this case).

    And before you pick on Chisum, he had nothing to do with the formulation of this particular law – he has merely noted its existence and traced it back to the judiciary that created it.

    I would be exercised about it, but the inanity posted is even worse than the judicial activism. To boldly proclaim “makes no sense” is itself nonsensical. There is sense here.

    Of course, there are clear problems with the way the sense is invoked (in my view in an illegal manner – given that the power to make patent law is expressly given to the legislature and not the judiciary).

  28. Unfortunately, the delay caused by Caltech made it difficult for the Court to act in equity in this case.

    Sure, but an “equitable” solution was only necessary because the Federal Circuit adopted the USPTO’s made-up rule that allows a single inventor in commmon (not a unitary inventive entity) to turn an otherwise completely irrelevant piece of paper into a double-patenting rejection.

    If Caltech was guilty of laches, that’s another issue. I don’t recall that issue being addressed.

  29. The USPTO did not necessarily screw up. The claims in the ETH-Zurich application may have been non-obvious over the earlier-filed claims of the Caltech application.

    I wondered about this possibility. The prosecution history of the ETH-Zurich application goes on forever. There are 102 rejections right up to the end of the case and, earlier on, obviousness-type double patening rejections in view of what appears to be another Hubbel application (this one also owned by ETH-Zurich, allowing a terminal disclaimer to be filed). However, it does not appear that Hubbel’s early Caltech application (a 102(b) reference) was ever argued in an obviousness rejection.

    It’s always a bit suspicious when an Examiner’s last rejection includes 112 and 102 rejections but no obviousness rejection …

    Returning to your point about the patentability of non-obvious species over a broadly disclosed genus — no doubt that’s true. A single entity can have a patent to a genus and another patent to a non-obvious species, or two such patents can be separately owned by different entities. But that well-known and acccepted fact seems to me to undercut the broadly characterized “multiple lawsuit harassment prevention policy” touted by the majority and used to justify the denial of CalTech’s genus claim simply because the later-filed species claim was granted first.

  30. Apparently “l*natic fringe” is not allowed…
    The post I’ve attempted 3 times:

    I’ve only skimmed the case, but I agree, based on what I’ve seen so far. The court can discuss policy objectives and Chisum all day, but they have to find legal authority for what they’re doing in the statute.

    Congress has not granted the courts authority to deny or invalidate patents on policy grounds. As MM noted, the courts initially found statutory support for obviousness-type double patenting through the use of “a patent” in 101. If you ignore that (which this court apparently does), you’re left with the unequivocal language of 102 (as limited by 103, of course), which states that “a person shall be entitled to a patent unless…” certain prior art is available. The present court explicitly acknowledges that the first-granted patent is not available as prior art, but never tells us where in the Patent Act they derive the authority to deny the Hubbell claims. Again, as MM notes, “policy,” the MPEP, and Chisum do not override the statute.

    I’m surprised that the l*natic fringe that sees “judicial activism” in every second move from the Federal Circuit isn’t a little more exercised about this.

  31. Simple solution:

    Issue the Caltech patent and have the Director order a reexamination of the ETH Zurich patent. Interfering claims or obvious variants thereof will be cancelled from the ETH Zurich patent.

    What happened here was an injustice.

  32. Exactly. However, the USPTO did not necessarily screw up. The claims in the ETH-Zurich application may have been non-obvious over the earlier-filed claims of the Caltech application. The problem Caltech faced was the inability to argue two-way non-obviousness. It was enough under the rules that Caltech claims were arguably obvious over the later-filed claims by ETH. Think of it as a genus-species situation. The later-determined species can be non-obvious over the earlier-determined genus, but the genus can never be non-obvious over the species.

    Caltech asked for several alternative remedies, including two-way obviousness analysis or the ability to file a terminal disclaimer without common ownership, i.e., to prevent additional patent term. Unfortunately, the delay caused by Caltech made it difficult for the Court to act in equity in this case.

  33. Sorry MaxDrei, but again your spin is simply misplaced.

    I am not ‘peeved’ that “no one attempts to engage me in conversation.”

    Quite in fact, I laugh at you and your attempt to use a Crybaby Veto.

    It’s pretty pathetic that you circle your wagon around Malcolm. Pathetic – but not surprising.

    “dear readers” indeed. Tell me, MaxDrei, would you listen to these same ‘dear readers’ if they were to tell you to stop shilling for all things EP? Yes – we both know the answer to that, don’t we.

  34. Two hours go by and even though it is only 9:20am I can see that you’re getting peeved now, anon, that nobody sees any point in attempting to engage you in conversation.

    Dear readers, am I wrong? Would any of you today enjoy exchanging opinions with anon? He’s very keen to hear from you, whenever you get the urge to mail him.

  35. I love posts that address “dear readers” from someone who has also expressed an unwillingness to folow conversations through to a decisive finish “because they don’t feel like it” – someone only too willing to ignore valid points made.

    MaxDrei, is this just another of your shameful attempts at a Crybaby’s Veto?

    Don’t you think it time for you to display a bit more intellectual honesty? Do you, as does Malcolm, wish to totally ignore the arguments put forth by the majority and by such learned people as Chisum? Have you read the cases I heve presented (and as used by these people)? What exactly is the level of scrutiny you are using (if any at all)? Or are you content to sling arrows from the sidelines, attacking those who actually engage, while saying nothing of import yourself?

    Kindly join in the conversation in a substantive manner (if you so deign), or kindly STFU.

  36. Nice spin MaxDrei – except that’s not what my post means at all.

    Quite in fact, a difference does exist – but the hypo was not clear on the matter.

    Meanwhile, I for one would be interested this week to see Malcolm’s hypothetical addressed by people who have something intelligent and useful to say about it.

    LOL – apparently, the “intelligent and useful” crowd excludes you, as the only thing you offer is a misaimed shot at me.

    Way to go, son.

  37. You are the one that brought it up – along with the “irrelephant” political B$.

    Can we please abstain from such altogether?

  38. So, readers, the main question this morning is: Does the majority’s double-patenting reasoning stand up to scrutiny?

    Still suffering from his uncontrollable urge to post, even before he has anything useful to say, anon feels impelled immediately to chirrup the useless fact that he does not know what difference it makes, whether or not the PTO was informed of prior X.

    Meanwhile, I for one would be interested this week to see Malcolm’s hypothetical addressed by people who have something intelligent and useful to say about it.

  39. did BigBiz properly inform the Office of the prior applicaiton by X?

    If you wish to only address the situation where “the office was properly informed of the prior application” before it granted the second patent, you are free to do so. Just let everyone know why that additional fact (or lack thereof) makes the double-patenting rejection any more (or less) nonsensical.

  40. Is your gender really that relevant? Can we please move on out engaging in these irrelephant discussions?

  41. Thank you, but I am no “ma’,am,” and it is you that is guilty of derailing this thread – in case you forgot, this is not an open political party B$ thread, but rather, it is a patent law thread.

    Wake up son.

  42. I am sure that if, as you additionally posit, an inventor was left off, there would be additional ramifications.

  43. Don’t be snippy.

    I hope you realize that the duty to disclose is fully in play in your hypo.

    So, point blank then, did BigBiz properly inform the Office of the prior applicaiton by X?

  44. In case the weirdness isn’t evident, consider that SmallBiz is denied its patent under the majority’s scheme only because it correctly named all six inventors on its application. Had inventor X been left off, we’re looking at interference at best, with BigBiz almost surely being the junior party.

  45. Does application by FGHILKMX reference earlier application ABCDEX in its ESD requirements?

    No ESD requirements. This is “pay to play”, i.e., Track One Prioritized Exam. Not sure why that would change anything.

    You were given the facts. If the answers to the question depend on some facts that are not identified in the hypo, just say so and state what those facts are and why they affect your answer.

  46. Sorry ma’am, but I’m not going to spoon-feed everything to you and water it down to the lowest common denominator. Stop trying to derail the thread.

  47. As for any “insults,” the ones I give are fully deserved – unlike you who happen to insults anyone, even first time posting cancer survivors or those paying respects to recently departed fathers.

    Weirdest. Blogtroll. Ever.

  48. Perhaps a hypothetical would be useful to illustrate the strangeness that results from the majority’s “reasoning” in this case.

    Year 1: At SmallBiz, inventors A, B, C, D, E, and X collaborate on an invention and file a patent application in which the application is claimed.

    Year 1.5: Inventor X leaves SmallBiz and joins BigBiz.

    Year 2: BigBiz sees an opportunity. An application is filed naming inventors F, G, H, I, J, K, M and X and claiming a very similar invention to that described in SmallBiz’s application. The application is filed under the “pay-to-play” accelerated exam program and the USPTO grants BigBiz a patent that same year.

    Year 3: The USPTO rejects SmallBiz’s claims as “double patenting” because X appears as an inventor on both applications.

    How is this a sensible result? Who benefits and why?

  49. Oh, I understand it alright – political B$ that has nothing to do with patent law.

    Why don’t you find a different corner to w@nk that stuff?

    You can keep it real and bring Francis with you.

  50. What the F are you talking about? WHat does this have to do with patent law?

    I suggest you keep on reading it until you understand it.

    You are not there yet.

    Thanks.

  51. Next read the cites provided by In re Falloux, including In re Van Ornum.

    (wow, look at that, Chisum pops up again).

    What exactly do you have to support your view (other than a dissent that misses the applicable law, that is).

    Figures the time that you side with Newman is the time she is wrong.

    But that’s Malcolm being Malcolm.

  52. You’re just repeating yourself.

    So are you. Difference is that I am right.

    I suggest you actually read In re Falloux.

    I did.

    I suggest you keep on reading it until you understand it.

    You are not there yet.

    Thanks.

  53. I suggest you actually read In re Falloux.

    I did.

    This is one instance where Judge Newman is completely off.

    You’re just repeating yourself. Why is she “completely off”? Because she didn’t cite Chisum? That’s the only other “point” you made.

  54. badly aligned incentives for the GOP.

    What the F are you talking about? WHat does this have to do with patent law?

    Can we at least keep the conversations even remotely to patent law here?

  55. This is a very good post. The first paragraph is basically spot on. There are some very badly aligned incentives for the GOP. To be honest I don’t think the GOP will be able to come together with the Democrats when they absolutely have to. It’s important to remember that the last time there was a massive bailout (I’m talking TARP) Bush was still in office and the Republicans were much more willing to work.

    I wouldn’t have been that unhappy with Romney winning for exactly this reason. The House and Senate GOP would have been willing to follow his lead into a grand compromise, and the Democrats would have as well. In other words Barack Obama winning very nearly doomed us to 4 more years of nothing happening.

  56. I suggest you actually read In re Falloux.

    This is one instance where Judge Newman is completely off.

    As are you for your usual vacuous “sniff” treatment of the law.

    As for any “insults,” the ones I give are fully deserved – unlike you who happen to insults anyone, even first time posting cancer survivors or those paying respects to recently departed fathers. So please stop your usual mischaracterizations, as I do not insult anyone and everyone who disagrees with me on any topic. Your perpetual spin fools no one, and only casts every word you say into a dust cloud of doubt and suspicion. That’s no way to go through life, son.

  57. Many thanks indeed Mr Feigelson. I should have myself provided the Link.

    Of the 4 Papers, I think the one on “Conflicting applications” is the best. But the one on “Grace Periods” is pretty good too. For anybody interested in comparative patent law, all four are worth a look.

  58. Because what the majority said was pointless – um, right. Because what Chisum says is pointless – um, right.

    Chisum didn’t decide the case. The majority did. And their reasoning doesn’t make sense to me, for the reasons I (and Judge Nemwan) carefully explained.

    Your initial response was to accuse me of not being able to read. After my explanation (devoid of personal insults), you dug in your heels and mischaracterized Newman’s dissent. You said she “overlooks all the cases in the majority opinion.” That’s false. On page 7, at least, she directly addresses one of the key cases cited by the majority (In re Falloux).

    As for Chisum, I have no idea why Newman or any judge should feel it necessary to address something Chisum said in any of their opinions (Professor Chisum, you’ll recall, was notably lacking when it came to understanding and communicating the facts and issues in Prometheus — he’s hardly infallible; oh, and nothing that he writes is precedential or binding on any court — that’s sort of important).

    Do you realize just how silly you look, Malcolm?

    As I’ve said before, anon, I think Dennis looks silly for allowing you to continue to personally insult anyone and everyone here who disagrees with you on any topic. You’ve insulted both Dennis and I many times. According to you, Dennis is just a leftist academic who throws “chum” to his fellow “anti-patent” “shills” as part of our coordinated “attack” on patent rights. Right. Keep up the “devastating” work, anon.

  59. Yet another of your traditional replies, Malcolm

    Accuse others of what you do.

    You didn’t make any “points”, anon

    Because what the majority said was pointless – um, right.
    Because what Chisum says is pointless – um, right.

    Do you realize just how silly you look, Malcolm?

  60. The policy of that ‘animal’ is exactly on point

    I have no idea what you are talking about. Can you try it in English?

    Newman rather overlooks all the cases cited by the majority

    No, she doesn’t.

    ignoring vlaid points ‘works wonders,’

    Right. Hence your endless insults in lieu of “valid points.”

    kindly actually read the points I make

    You didn’t make any “points”, anon. Try again. Or give up already.

  61. Frankly, anon, it doesn’t sound like something you’d like very much

    It’s not.

    It’s also not the point of the argument.

    The point is that that ‘animal’ does exist now. The policy of that ‘animal’ is exactly on point to what Judge O’Malley states (oh that’s right, didn’t you post awhile back that Chisum [otherwise known as a respected authority] is just a hack?).

    D-mmingly, Newman rather overlooks all the cases cited by the majority, as well as Chisum. I know that in your book, ignoring vlaid points ‘works wonders,’ but those in the real world don’t do that.

    As for the rest of your ramblings, kindly actually read the points I make – they are much more in line with the reality of this world, right here and right now.

    Thanks.

  62. makes no sense?

    Right, the majority opinion doesn’t make sense for the reasons I alluded to. Judge Newman’s dissent makes infinitely more sense.

    Judge O’Malley highlighted multiple-suit harassment problem that served as the originating policy concerns for the limiting doctrine

    So there’s “policy” that people should not be “harassed by multiple lawsuits”? Maybe a more appropriate doctrine to prevent such harassment would be called “You Can Only Get Sued Once for Patent Infringement.” I look forward to the Federal Circuit creating that doctrine out of thin air. Frankly, anon, it doesn’t sound like something you’d like very much.

    Nothing in this opinion will prevent anyone from being “harassed” by “multiple lawsuits”. The hand-waving by O’Malley is the idea that double patenting was the response to “multiple lawsuit harassment” (full stop). That’s just re-writing history, and it’s a poor re-write at that.

    Double-patenting is intended to prevent an applicant from obtaining two patents on the same invention. In the US, it arises out of section 101 (an inventor “may obtain a patent” [singular] to protect his invention). The judicially created obviousness-type double-patenting was created to prevent an applicant from extending patent term by filing claims to obvious variants of issued claims. That’s the original policy. The other business came later and it’s utterly needless. Why are the other patent statutes not suitable for addressing “multiple lawsuits” being filed by different entities with different inventors but comprising patentbly indistinct claims? The answer is the USPTO isn’t doing its job.

    Here’s the MPEP:

    Before consideration can be given to the issue of double patenting, two or more patents or applications must have at least one common inventor and/or be either commonly assigned/owned or non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 103(c)(2) and (3) pursuant to the CREATE Act

    See that part in bold? That part was made up purely by the USPTO. The majority recognizes that and then says “the MPEP standard is consistent with the rationale we have used to support application of obviousness-type double patenting rejections”. That’s about as weak of a standard for establishing binding “precedent” as one could possibly imagine. Any one of us could come up with hundreds of USPTO rules that are “consistent” with the policy of “avoiding multiple harassing lawsuits.”

    More d-mningly, as Newman points out, is the fact that the MPEP also defines in the context of double-patenting that “two sets of joint inventors do not constitute a single inventive entity if any individual inventor is included in one set who is not also included in the other set.”

    It seems to me what happened in this instance is that the USPTO screwed up and should not have issued the second-filed patent (the ETH-Zurich application with different inventive entities named). The proper “solution” to address the “multiple harassment” policy issue is an interference/derivation proceeding, or for the USPTO to recognize its error or initiate re-exam of the second patent sua sponte in view of the earlier filed application.

  63. As usual it sounds like Judge Newman has the better grasp of the interplay of the law. I believe it is still the case – that within one year from the issue date of the junior patent – caltech could have made an interference claim in its application – copied claims from the issued patent – and then provisionally disclaimed the copied claims. I suspect the one year date has passed. Has the AIA changed that?

  64. Thanks Dennis for such a clear write-up, which exposes the core issues.

    I see this as an example of what in Europe we call “self-collision” where two cases with linked inventorship/ownership interfere with each other. While the rest of the world deems earlier filings of the same inventor/owner not part of the prior art, the 1973 EPC does not (to the continuing bafflement of clients of mine in Japan and the USA). Your own earlier filings are just as deadly to your patentability as earlier filings of anybody else.

    The Tegernsee Group looked intensively at self-collision and published a Discussion Paper which is available on the EPO website. Japan reports that their patent statute has a self-collision preventer because it is thought to be impossibly difficult for patent attorneys in Japan, when drafting, to take account of all the earlier filings of their client.

    To which I would respond: what sort of a half-arsed reason is that then? Since when were the provisions of patent statutes chosen for the convenience of patent attorneys. It is a heck of a lot easier to take account of the earlier filings of your client than those of others, completely independent, that you can know nothing about till the PTO publishes them.

    This case is another example of the contortions that arise in self-collision situations, and vindicates the extreme simplicity of the 1973 EPC.

  65. (sigh)

    makes no sense?

    Bother reading much?

    From the good professor (and at least two federal circuit judges): “Judge O’Malley highlighted multiple-suit harassment problem that served as the originating policy concerns for the limiting doctrine

  66. Under Judge Newman’s theory the patent should issue on its merits or perhaps be subject to an interference or derivation proceeding.

    At first glance, I’d have to agree.

    How can you have a double patenting issue when the cases are not co-owned? Makes no sense.

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