Court Expands Doctrine of Obviousness Type Double Patenting

By Dennis Crouch

Gilead Sciences v. Natco Pharma (Fed. Cir. 2014)

Gilead’s two virus inhibition patents at issue in this case are quite similar to one another, although there is no priority claim creating an official family relationship between the patents. Patent Nos. 5,763,483 and 5,952,375. In a not-uncommon fashion, the application resulting in the ‘375 patent was filed first, but, because of a variety of prosecution delays, was the last to issue. The ‘375 patent is also set to be the first-to-expire. Note, after the ‘483 patent issued, Gilead filed a one-way terminal disclaimer for the ‘375 patent – limiting that patent’s term so that it cannot extend beyond the term of the ‘483 patent. Of course, that limitation is meaningless since the ‘375 patent naturally expires first anyway. The following timeline may help illustrate the relevant dates:


Double Patenting: This setup raises the prospect of obvious-type double-patenting. That doctrine is not based upon any statute, but has been applied by courts as a mechanism to prevent patentees from prolonging their patent term by obtaining a second-patent with claims that are not patentably distinguishable from the claims in the first patent. The general rule is that a terminal disclaimer cures the obviousness-type double patenting. However, here, one of the patents (the ‘483) patent does not have a terminal disclaimer.

Later Issued but Earlier Expiring Patent: The district court ruled in favor of Gilead – holding that, as a matter of doctrine, a later-issued but earlier-expiring patent cannot serve as a double-patenting reference against an earlier issued but later-expiring patent. That rule cited here by Judge Wigenton (D.N.J.) follows two Delaware district court cases stating the same proposition. Abbott Labs. v. Lupin Ltd., 2011 WL 1897322 (D. Del. May 19, 2011) and Brigham & Women’s Hosp. Inc. v. Teva Pharm. USA, Inc., 761 F. Supp. 2d 210 (D. Del. 2011). Those cases are in conflict with a PTAB decision on the same topic: Ex Parte Pfizer, Inc., 2010 WL 532133 (Bd. Pat. App. & Interf. Feb. 12, 2010).

On appeal, the Federal Circuit focused on the particular legal question: “Can a patent that issues after but expires before another patent qualify as a double patenting reference for that other patent?” The answer: Yes it can. With the result here being that the district court’s decision is in error. The majority’s reasoning makes sense – the primary purpose of the double-patenting doctrine is to prevent a patentee from unduly extending its patent term and here, Gilead is attempting to do so by an additional 22-months.

The majority opinion was filed by Judge Chen and joined by Judge Prost. Chief Judge Rader filed a dissenting opinion arguing that the court should have acted more cautiously in extending the judge-made rule. Judge Rader writes:

Under the AIA’s new “first-inventor-to-file” framework, prospective patentees are under tremendous pressure to file their applications early. I am concerned that today’s opinion will have unforeseen consequences in this new race to the Patent Office.

I would suggest that – most likely – the doctrine of obviousness-type double patenting would have never been created if the current regime had been in place way back when. Most notably, calculating patent term as 20-years from filing eliminates most potential game playing and the publication rules would typically result in an earlier filed patent being seen as prior art – even if jointly owned.

Extension and Adjustment: Although this issue has been addressed somewhat in other cases, this decision does not offer any insight as to how double-patenting applies to cases where the difference in patent term is due to a patent term adjustment or extension.

= = = = =

The currently proposed legislative patent reforms would codify the double patenting exception in a somewhat narrower fashion. This would potentially limit any further judicially motivated alterations in its scope.

72 thoughts on “Court Expands Doctrine of Obviousness Type Double Patenting

  1. Ah! The opinion is authored by Chen, ex PTO solicitor.

    It looks like we have a new cowboy on the block who seems to know better than the Supreme Court.

    God help us.

    1. I seem to remember some criticism of Mr. Chen when he was appointed and those who offered up the criticism getting an earful of how qualified Mr. Chen was.

      Sounds like some apologies are due.

      1. LOL -in multiple ways – to those that spoke against Chen, and from those that spoke against Rader…

        (if consistency is important to the person to whom the request for apologies was aimed at)

        1. anon, when I withdrew my opposition to you on 101, I necessarily also revised my previous remarks on Rader and 101. I now see him as following the letter of the law, but in a way that illustrates its ultimate lack of clarity both to his fellows and to the Supreme Court. I would do the same if I were he.

          This is not to say that I agree with all Rader’s decisions. I do not. But I no longer see him as wilfully defying the Supreme Courts as I once did.

          1. Nice – (and thanks) – but the real point is that it is not up to the Supreme Court to write patent law.

            But we will take baby steps to get there.

    2. Oh, I had forgotten that Chen was a PTO solicitor. That helps to explain this incident during oral arguments a few weeks ago:

      link to oralarguments.cafc.uscourts.gov

      Start at 19:00, which is when Judge Lourie asks a question. The attorney missteps at 19:30, and Judge Chen jumps in at 19:40. Good times…

      1. Lulz. Quite a comment about money.

        Although frankly I’m still not even sure why restriction practice is the way it is. It’s some arcane practice that bears no reasonable view to the challenges the office faces today and that makes it a wonky fit into today’s prosecution.

  2. Not only is this decision questionable from a policy and precedential standpoint, but as a practical matter, this case creates “springing” landmines for already-issued patents which may be difficult for a patent owner with a large portfolio to detect and deal with. A patent as issued is valid, but then years later it can become invalid for obviousness-type double patenting. And it appears that a terminal disclaimer will only operative to make the patent valid prospectively, not retroactively. See Boehringer (Fed. Cir. 2010).

    1. DT,

      If one complies – as is required (see post 3) – then there will be no ‘springing landmines’**

      ** – any suitable bi-directional term disclaimers being properly provided.

    2. DT, You’ve got it right.

      Subsequent events should have no effect on the validity of an earlier-issued patent. This is why the law of double patenting has always held that the second-to-issue patent is invalid.

      The result in this case is not only wrong, it is absurd.

      1. held that the second-to-issue patent is invalid

        Hmmm, an interesting side thought to this: how much is the Office to blame for its role here?

        But for the Office inability to review and decide on applications on a First In First Out** basis, there would be no issue of a topsy-turvy second filed item being granted first in line, would there….?

        ** note that FIFO processing is not being advocated, but is merely noted as a discussion point. As I mentioned – a duly made bi-directional term disclaimer would have nullified the issue here.

        1. Anon, is still remains that the first to issue patent should have a term that is unaffected by later events. As Rader noted, in order to accomplish that in today’s world, one has to give up priority. I do not see what is accomplished by forcing one in addition to entirely abandon the first filed case, as that is what the result of this case will force.

          1. Ned,

            It still remains a problem that the applicant did not follow rules while having both separate-family applications that were in fact heavily related to each other active – but without notice to the Office.

            You may think that you do not have to follow rules, but you do. Your reference to Therasense is inapposite to this point, as that case draws a firm distinction between actions before the Office and actions in a later court proceeding.

            You asked for a rule and I gave you a rule. You then try to say that the rule can be ignored. Do you really feel that you can ignore any rule that you may not like?

            Even aside from the problem that you seem not to want to discuss, there are other problems with your position:

            As Rader noted, in order to accomplish that in today’s world, one has to give up priority

            And as I noted, the method used by the applicant in this case was deficient. If they had instead provided a bi-directional disclaimer, there would have been no issue here.

            1. Anon, just listen to yourself. When you say, “ And as I noted, the method used by the applicant in this case was deficient. If they had instead provided a bi-directional disclaimer, there would have been no issue here.

              If they did that, that would have defeated the entire purpose of not claiming priority.

            2. Ned,

              I see why you might be confused.

              Yes, the bi-directional disclaimer would have limited the two different (but admittedly not patentably distinct) applications to a single term and removed the possibility of evergreening.

              You seem to think that such is a bad thing. Even as I take your post at 6.2.1.1, you still seem to not want to give up what appears to be extra term.

              But for argument’s sake (and down this path I would ask that you consider what you so far have chosen to ignore), let’s entertain the thought for a moment that evergreening was ‘allowable’ in that an applicant could decide not to claim priority to what otherwise might be a bar-dated filing.

              This is where the importance of Rule 56 (combined with the Oath) comes in. You have provided no reasoning whatsoever that Rule 56 does not pertain to the admissions of the applicant – during prosecution of both applications – of the knowledge that another highly-related application is in play – even if the applications are not claiming priority to each other.

              You have merely states that you would not follow the rule (I am not sure just how controversial a statement that is – or how much that might open you up to malpractice).

              Again, I reference you to my post at 3. One possible reason for making sure Rule 56 is followed in this case is that the size of the one family, with a huge number of cip’s, and at least one con and one div may generate office actions and items on the record that would be pertinent to the very similar application. Even in the instance in which no priority is claimed, these types of interactions are most pertinent to the examiners on the two different familied applications. It really does fall within the rule – no matter what the courts have decided on NOT basing their post-grant views on that rule. The distinction is made in the Therasense case – you just are not seeing both edges of the sword as brandished in that case.

            3. Anon, we have previously discussed this and I believe the holding of the Federal Circuit in TheraSense is that rule 56 does not control the issue of an equable conduct. It is the law, and I mean by that, court decisions that controls what is and what is not inequitable conduct. Effectively, TheraSense has held that rule 56 cannot have any substantive effect on a patent. I daresay, it will be a cold day in Hades when the PTO tries to discipline a patent attorney for following the law even if they believe there was a technical violation of rule 56. This would again place the PTO in direct conflict with the Federal Circuit and I don’t think they’ll do that.

              I don’t quite know what you mean by evergreening, but I do think that one has a legal right to not file a claim for priority in order to extend term under today’s regime. There is no requirement in the law to claim priority where priority claim can be made, but in effect the ruling in this case says there is an implied law to that effect. To me Congress controls the statutes, and if it did not require the claim of priority to be made if it could be made, then one has a legal right not to claim priority. After all, the claim to priority is a benefit to the applicant, not a burden.

              And just as Judge Rader noted, as we enter the new AIA world, there might be very good reasons for not claiming priority. We also know that if one does not claim priority, the benefit is extended term. There is a risk of more prior art, but there is the reward of extended term. The ruling in this case takes away the reward, thereby almost requiring people to claim priority when they do not want to claim priority. Furthermore, as I said, the only other way to handle the situation is to abandon the first-filed case prior to its issuing, or perhaps disclaiming its term. I think this is a harsh remedy.

            4. Ned, once again, you are engaging in over-reading.

              Read again the case and note that the court did not eliminate Rule 56, nor say that people did not have to follow that rule.

              Read again exactly what they distinguished. Your view as the rule having zero effect simply is not something that can be taken from the case. I do agree that Therasense laid out a but-for level. But that is not the only thing going on. That is why I have said that it is a combination of Rule 56 and the Oath that may rise to IC. Even short of IC, though, one cannot simply chose to ignore rules that govern applicants and their representatives during prosecution.

              That is also why I asked as I did in post 5.1.1.1.1.9:

              What then of ANY Office rule that a violation there of is not caught while the applications are still in front of the Office?

  3. Rader points out that Gilead deliberately did not claim priority in the second filing in order to gain patent term at the expense of prior art.

    He further points out that had Gilead not allowed the earlier-filed case to issue, the second-filed case would not have been term limited.

    Not discussed here would be the effect of a statutory disclaimer of the first- filed patent’s entire term to erase it from the patent records.

    Rader makes a very, very strong case that the majority is flat out wrong.

    1. Ned,

      Not claiming priority is one thing. But see post 3. One cannot “play the game” of only not claiming priority – there are existing rules and mechanisms already in play that should take care of this situation – without adding to non-statutory judge-made mechanisms.

      Further, I do not think that a full-term statutory disclaimer would have the effect that you are thinking of: such would not “erase it from the patent records” as to removing any prior art effects – only the term would be removed – not the item itself.

      What is on point in Rader’s dissent is the notion of judicial restraint:

      “As an initial matter, I would proceed more cautiously before articulating a new rule to address this novel situation. In my opinion, courts should be reluctant to create or expand judge-made exceptions to statutory grants. See, e.g., W. Union Tel. Co. v. Lenroot, 323 U.S. 490, 514 (1945) (Murphy, J., dissenting) (“[T]he judicial function does not allow us to disregard that which Congress has plainly and constitutionally decreed and to formulate exceptions which we think, for practical reasons, Congress might have made had it thought more about the problem.”); United States v. Rutherford, 442 U.S. 544, 559 (1979) (“Whether, as a policy matter, an exemption should be created is a question for legislative judgment, not judicial inference.”). Thus, I would view the question through the lens of judicial restraint.”

      1. anon, the majority also go the policy wrong. The policy is that there be fixed terms, not indefinite terms.

        The applicant had the right to a term 20 years from filing of the second patent because he did not claim priority to the first.

        1. Ned,

          Once again, I point you to post 3 – Only looking at the one issue of filing date without looking at the other issue of telling the Office that more than one application is being processed…

          …does that not indicate to you that perhaps inequitable conduct is under foot?

          1. anon, I think the applicant’s duty is not to prosecute claims that are invalid.

            UNDER THE LAW, the claims of the ‘483 were not invalid. The claims in the ‘375 were unless a terminal disclaimer was filed. This the applicant did.

            The applicant did what the LAW required. There is no ethical violation.

            1. I don’t know how it applies here exactly, but Anon is certainly right that the duty of candor and good faith dealing requires more than merely complying with USPTO regulations and the governing laws of Title 35 of the U.S. Code.

            2. Dennis, with all due respect, no it does not.

              If one fully complies with the law and rules (other than the ultravires Rule 56), and the resulting patent is valid, one has done all that the law requires of him or her.

            3. Dennis, the premise is this: one fully complies with the law, the rules and the patent is valid.

              We are dealing here with non disclosure of something that is not invalidating — meaning, it is immaterial, not an affirmative misstatement of fact or law. Such misstatements, I believe are contrary to law.

              Thus, here, the applicant formed a strategy of not claiming the benefit of the filing date in order to extend term. This was and still is IMHO entirely legitimate. The applicant filed a terminal disclaimer in the second to issue patent as required by law.

              Under no stretch of the imagination did the applicant do or say anything illegal, or unethical, nor fail to do anything not required by rule or law.

              I cannot see how the PTO can discipline the attorney or urge that the courts hold the patent unenforceable because at no time did the applicant ever do anything he did not have a legal right to do, nor did he misrepresent anything, or try to pull a fast one on any examiner to get something that he was not entitled to receive.

              Where is the misconduct?

            4. anon, your rule is rule 56. If violation of the letter of that rule were inequitable, then the PTO would be setting substantive law.

              Moreover, the position you advocate LOST in Therasense. There is no “duty” that the PTO can enforce against a patent under rule 56.

              What we have is this: under the law, the second to issue patent on the same or substantially the same invention is invalid.

              Under the law, the first to issue patent is entitled to its full term.

              Actions consistent with the law are legal.

            5. Actions consistent with the law are legal.

              Unless they are not.

              On its face, my position does indeed seem to reflect the losing side in the Therasense case. – but only at first glance. As it is, it is not just the Rule of 56 in play, but that rule and the Oath combined that are in play.

              Therasense does seem to have an iron thumb on a but-for -NOT-patent-defeating aspect to it. But look again – Therasense does still include the possibility of penalty for lying under oath or other types of fraud. While there is no doubt that a delta exists between the Rule of 56 and the case law of Therasense, the Rule of 56 has not been completely gutted – it is still a rule on the books and that rule still governs applicants (and their representatives) behavior before the Office.

              In part this is why I draw the distinction between the so called “Trolls” – who by and large in the traditional sense of that pejorative do not have any prosecution before the Office and the immediate case in which BOTH the inventors and their representatives had both items concurrently in prosecution before the Office.

              I do agree with you that there does appear (at first blush) to be a problem with the rule in that a violation of the rule appears to be setting substantive law and that a second granted patent does appear to be dragged back under the control of the Executive branch in apparent violation of Therasense.

              Regardless of that quandary, though, you asked for a Rule and I gave you a Rule.

              I would posit that a violation of Oath occurs in this particular fact pattern – whether or not the Office caught the offense and even whether or not the offense rises to a Therasense but-for nullification of the second filed patent. While that second filed patent was first granted, the oath for that second filed patent does appear (I say merely ‘appear’ as a definite pronouncement would require a careful review of the contents of the file wrappers for both families at the time of that second filing, and the first filed family has upwards of fifteen members, not all of which fall into the appropriate time frame).

              Do you disagree that the Rule was violated, or do you only disagree as to what the possible effects of a Rule violation may be?

              What then of ANY Office rule that a violation there of is not caught while the applications are still in front of the Office?

            6. anon, I do not consider rule 56 to be a rule that I have to follow because I consider it ultra vires , particularly in view of TheraSense . To the extent you define duty of candor as a duty not to misrepresent fact or law, that I would agree with you because that is the duty of every attorney in any court. Thus, one may not represent before the patent office a position on an issue of fact or law one knows not to be true, and this would extend to representations that skate close to the edge. Litigators always skate close to the edge, if not way over it, knowing that the other side will have its say. The duty to speak to the office requires a bit more candor than the litigator in court.

              In the case at bar, under the law, the patent applicant had a right to forgo a priority claim in exchange for extended term. There is nothing unethical about this behavior. They did so as a matter of legal right.

              The second-to-issue patent, being an obvious variation, was invalid absent a terminal disclaimer. The point of this terminal disclaimer had nothing if any to do with its term that by law was shorter than the first-to-issue patent. The terminal disclaimer was required to maintain common ownership. Everything the applicant did was legal and aboveboard.

              The present decision by Chen, ex-solicitor of the patent office, was an unexpected aberration at best. I think it will soon be overturned en banc, and if not en banc, by the Supreme Court. It is a fluky decision, one of the worst made in recent history by the Federal Circuit, and it appears to be Chen’s first effort. This is an inauspicious beginning.

            7. anon, I do not consider rule 56 to be a rule that I have to follow because I consider it ultra vires , particularly in view of TheraSense

              Do you not think it more than just a little bit dangerous for you to decide which rules of conduct before the Office you need to follow and which you do not?

              Do you take the same view of the Oath that is filed?

              To the extent you define duty of candor as a duty not to misrepresent fact or law, that I would agree with you because that is the duty of every attorney in any court.

              Not just “in court,” Ned – check out the ABA ethics (and the Hricik side of the fence regarding attorney behavior in social media contexts). This is why I point out that Malcolm’s decrepit “this is just a blog” mantra does not work. While it may be true that this is a blog, and that your ordinary person has a First Amendment right to give his opinion, what transpires here is NOT by an ordinary person and is NOT mere opinion.

              But back to the immediate case:

              In the case at bar, under the law, the patent applicant had a right to forgo a priority claim in exchange for extended term. There is nothing unethical about this behavior. They did so as a matter of legal right.

              Ned – you continue to ignore the point that I make and the point put forth by the court. Whether or not an applicant attempts to try for extended term is not the issue. At all. The issue is how that applicant attempted to do so by neglecting to inform the Office of clearly related activities.

              Yes, this does parallel the discussion in the Therasense case as to the fact that it is NOT up to the applicant to decide “but-for,” but for the examiner to make that call.

              nor fail to do anything not required by rule or law.

              Wrong (again). Repeating yourself does not make my counterpoint go away. Whether you consider the rule ultra vires or not, the rule is in place. I provided the rule. You cannot de facto say that the rule is not there. It is there.

              It is black letter law that you are liable to even ‘bad law’ and do not get to decide – all on your own – that not following the law (or rule) in question is ‘ok’ and up to you to decide. On direct point here is that the Therasense decision did not explicitly throw out the Rule of 56.

          2. anon, I don’t know what you are driving at — are you suggesting that if one does what one has a legal right to do that that the patent is nevertheless unenforceable?

            You use a lot of words, but this does seem to be the bottom line.

            1. (sigh)

              The bottom line Ned is that you seem only too eager not to address the points I present to you.

              Again.

              Those points remain, whether or not you address them.

    2. Also consider that this was pure double-patenting.

      The second to issue would be invalid and the first to issue would have its full term.

        1. 6, and this is why this opinion is f*ck*d up, 6.

          Had the two claimed the same invention, the ‘483 would have been valid and the ‘375 invalid.

          Bizarro!

          FUBAR!

          Chen? PTO Solicitor?

          1. “Had the two claimed the same invention, the ’483 would have been valid and the ’375 invalid.”

            Is that how Double Patenting works out? It’s been so long since I dealt with it I don’t even remember what happens after everything shakes out.

            Either way, terminal disclaimers. They’re where it is at yo.

  4. I just got an OTDP rejection where the examiner LITERALLY acknowledged that he couldn’t figure out the differences between the patented claims and the pending claims, but concluded that the pending claims were anticipated by the patented claims.

    I guess a side-by-side and word-by-word comparison was beyond his meager skills.

      1. LOL – Malcolm once again asking of others, when he cannot be bothered to answer simple points that go to the heart of the software as patent eligible subject matter discussion.

        Go figure.

    1. “figure out the differences between the patented claims and the pending claims”

      Maybe he just couldn’t figure out how they were to be substantively different. A lot of people leave out the word “substantively” when talking in everyday language, but that is what they’re referring to even so.

      1. From MPEP 804II.B.1:

        “Any obviousness-type double patenting rejection should make clear:

        (A) The differences between the inventions defined by the conflicting claims — a claim in the patent compared to a claim in the application; and…”

        Not seeing anything in there about the “substantive” differences between the conflicting claims. The requirement is that the examiner make clear the differences between the conflicting claims. The differences. Pretty sure that means all of them.

        But please do feel free to keep making up your own law. And doing that record breaking outstanding quality work you all are doing over there.

        1. ” should”

          Not “has to”.

          “The requirement ”

          Not a hard req brosefus. “should” doesn’t mean “has to” here. No matter how much you want it to it isn’t going to make the office interpret this any differently or make office personnel issue rejections any differently.

          “”Not seeing anything in there about the “substantive” differences between the conflicting claims”

          If there are no identifiable substantive differences, but the wording of the claim is more than a little bit not the exact same, then the rejection will be obviousness type double patenting by way of anticipation. This is based on the office adopting the maxim of “anticipation is the epitome of obviousness”. And you or I disagreeing with this office practice doesn’t mean the office will magically stop wanting such rejections made or that examiners will stop this practice.

          “But please do feel free to keep making up your own law.”

          There is no additional “law” being made up. In fact the office has a case they cite to about the ODP via anticipation rejections being made. I forgot what it was off hand and don’t care enough to look it up. If you’re interested google ODP anticipation.

          1. And you or I disagreeing with this office practice doesn’t mean the office will magically stop

            LOL – shocking 6 that you might think that anything you discuss on a blog will mean the office even might do anything differently. Um, it is a pretty strawman you are stuffing with that comment.

          2. “In fact the office has a case they cite to about the ODP via anticipation rejections being made. I forgot what it was off hand and don’t care enough to look it up. If you’re interested google ODP anticipation.”

            Lulz. So you’re telling me that examiners cite case law that they’ve never read and wouldn’t understand even if they did?

            Thanks. But I already knew that.

            So did you.

            I’ve read those cases. And had them cited to me hundreds of times. And not once has the cite been apposite.

            Keep trying though. Some day you might actually stumble into being correct. You know what they say about broken clocks. Of course, for you and your cohorts to actually be correct twice a day would be a huge, huge improvement.

  5. This appears to be a source of a problem:

    From the prosecution history records, that appears to be the first time Gilead informed either the examiner of the ’375 patent or of the ’483 patent about the existence of the other patent application.

    It appears that both the inventors and the patentee’s representatives failed to follow their duties of candor and good faith and informing the office of full disclosure for these co-pending applications.

    Note, this is easily distinguished form the QQ cry against those obtaining property after prosecution has been completed (this note offered to forestall certain whining from certain whiners). 37 CFR 1.56: “The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability.

  6. I would suggest that – most likely – the doctrine of obviousness-type double patenting would have never been created if the current regime had been in place way back when.

    I think you’re right. There have been many, many terminal disclaimers filed in recent years that have no or very little effect, since the effective filing dates for the related cases are the same. I tend to traverse these rejections, though, since an unnecessary terminal disclaimer ties the two patents together for transfer purposes.

    On a somewhat related note, the training at the PTO on double-patenting must be pretty poor, judging from what I see. I frequently receive double-patenting rejections that should logically have been 103 rejections; in many of these cases it is clear that the examiner doesn’t understand how to handle references that Section 371 filings. Fortunately, the obviousness analysis accompanying these is usually woefully defective as well.

      1. Well yes, fortunately for me and the client I have in mind, since neither of us intends to file claims that are not patentably distinct from claims in earlier applications, especially when those earlier applications can present a real bar. In a larger sense, of course it is unfortunate that we’re getting improper double-patenting rejections in the first place.

        1. I was aiming for the unfortunate (rather than fortunate) point that an examiner’s obviousness analysis was woefully defective as well.

          Celebrating examiner deficiencies is never, never, a good thing.

          Your seemingly mea culpa of “since neither of us intends to file claims that are not patentably distinct from claims in earlier applications” does not change the examiner’s noted deficiency.

            1. Instead of a vapid response, DanH, a better one would be: “You are right – I agree that quality examination is important.”

              For one such as yourself to whine about the tenor of posts on this blog, then to partake of that same tenor is a bit hypocritical.

              If you want better posts, I suggest that you start with the posts that you control.

    1. I disagree with Professor Crouch’s quoted statement in part.

      A terminal disclaimer serves two purposes, namely 1) to cause both patents to expire on the same day in order to prevent extension of the “monopoly” term and 2) to prevent divergent ownership of the two patents in order to prevent enforcement of highly overlapping patents against the same entity by two separate entities. The latter concern is unaffected by the “current” patent term regime.

      The former concern also still applies if one of the two applications is filed substantially later than the other and no priority is claimed. For example, imagine a scenario in which a party files patent application “A” on 01/02/14 with generic claims, along with with a non-publication request, prosecutes that application through multiple RCEs and an appeal, and then files patent application “B” with the sub-generic claims on 01/02/2021 on the eve of the grant of the patent from application “A”. If the sub-generic claims are an obvious variant of the generic claims, a requirement for terminal disclaimer would certainly make sense from a public policy standpoint in order to avoid the 7 year defacto term extension.

      1. Tim,

        The second application has 7 more years of prior art.

        The “policy” is a constitutional policy that terms be limited to a fixed period. The period is set by Congress. Without the priority claim, the second-filed patent is not a continuation of the first and it expires 20 years from its filing per congressional policy if it is valid. It is not extending anything considering that it could have issued on the date it was filed and the applicant could have prevented the first filed from ever issuing, just as noted by Rader.

    2. “On a somewhat related note, the training at the PTO on double-patenting must be pretty poor, judging from what I see.”

      Not really poor training, it’s just that we hardly ever use double-patenting and we have to go back and remember all the odd ball stuff related thereto. Also, you’re probably getting a lot of actions from the new crop of examiners, they seem to think everything is a DP issue. Someone has to tell them that it isn’t and their spes do not appear to ever do so.

      1. “Not really poor training,…”

        Yeah, it’s poor training.

        “…it’s just that we hardly ever use double-patenting…”

        I get a fair amount of OTDP rejections. The basis of them generally appears to be, “Well, the assignee already has a lot of patents, so this must be an attempt to extend the patent term. I think. I can’t really figure out what the differences are and/or why they would be obvious, but my primary told me to make something up if I wanted my Office Action signed, so I’m rejecting the claims under the judically created doctrine of obviousness-type double patenting. Huh, huh.”

        “…and we have to go back and remember all the odd ball stuff related thereto.”

        Like, those flow charts in MPEP 804 are totally confusing. More confusing than Spicoli’s new class schedule.

        “Also, you’re probably getting a lot of actions from the new crop of examiners, they seem to think everything is a DP issue.”

        See above.

        “Someone has to tell them that it isn’t and their spes do not appear to ever do so.”

        Again, see above.

      2. “I get a fair amount of OTDP rejections. The basis of them generally appears to be, “Well, the assignee already has a lot of patents, so this must be an attempt to extend the patent term. I think. I can’t really figure out what the differences are and/or why they would be obvious, but my primary told me to make something up if I wanted my Office Action signed, so I’m rejecting the claims under the judically created doctrine of obviousness-type double patenting. Huh, huh.””

        Yeah that’s generally how the newbies make em. I still don’t understand how in the world it is that the spe or primary doesn’t catch these. They blatantly happen waaaaaay too often with new people. It’s like everyone that gets out of the academy is hyper sensitive to ODP issues being present when they’re likely to see maybe 1 a year. On most issues spes and primaries are willing to send stuff back and tell them not to make x rejection. But ODP/DP appears to be an outlier. Perhaps because the primaries or spe themselves don’t hardly remember wtf they two subjects are about and don’t want to look it up. But that’s just a wild guess.

        1. Yeah that’s generally how the newbies make em. I still don’t understand how in the world it is that the spe or primary doesn’t catch these. They blatantly happen waaaaaay too often with new people

          In other words, AAA JJ was right all along.

          /face palm – you have a rather odd way of saying “you were right.”

        2. “I still don’t understand how in the world it is that the spe or primary doesn’t catch these.”

          Uhm, because it’s the SPE’s and primaries that are telling the juniors to make these garbage rejections.

          Duh.

  7. As rightly mentioned in your post, what is the purpose for keeping the obviousness-type double patenting requirement? Indeed after the AIA changes, the prior arts to be considered according to 102 or 103 should take care of the artificial possibility to have later filed applications providing exclusivity longer than the original application. Why was the obviousness type double patenting requirement not amended to double patenting in the AIA, similarly to what the UK has in the law? Acting accordingly would avoid divisional patent applications being granted for the same invention. Furthermore the artificial obviousness type double patenting which seems to extend sometime far beyond its original intend would not prevent a patent to be granted on non-overlapping claims. The discrimination between same vs other applicants for the subsequent application on not the “same invention” would vanish.

    1. The AIA may be even worse than that julien, as there are colorable arguments (supported by the Congressional record such as “The Soliloquy”) that the AIA promotes a certain type of ‘evergreening’ by multiple obvious-over-the-same-inventor/inventor-assigned-entity and different applications not being able to be used against that entity.

      If such arguments carry the day, would any judge be able to say that Congress’s intent was anything but to allow such?

      Keep in mind as well that the AIA rises and falls as a single piece of legislation – if one part is found to be unconstitutional, the whole thing goes down. This view stems from the fact that Congress contemplated – and rejected – such a savings separability clause that was offered as an amendment.

    2. Julien, the “policy” is expressed in the constitutional requirement that terms be fixed, not indefinite.

      Thus, if two patents issue on the same invention, the second is invalid.

      The obviousness-type double patenting extends this to obvious variations.

      Today’s holding conflicts with double-patenting law of ancient vintage. This is not simply an extension of the law. It effectively overrules an ancient principle set by the Supreme Court. How the Federal Circuit thinks it can do this is a different question, but it does it all the time.

      1. Ned,

        Two separate points:

        1) The “fixed” versus “indefinite” length of term reminds me of….

        …copyright and Golan v. Holder.

        The power given to Congress in that case may yet again bleed over into the patent realm (I wonder, will the bleeding even stop at the “take back out of the public domain” point in Golan…?)

        2) As to your “blame the Federal Circuit” schtick – read again the decision, and note how the 1952 Act is referenced in yet another example that that Act was not simply some mere codification.

        1. anon, the copyright cases have to be considered. The Supreme Court laid done that the policy is that the terms be fixed, not indefinite. This does not mean that they cannot be extended, so long as they remain fixed.

          The congressional policy is expressed in the statute that sets the expirations to be twenty years from the effective US non provisional filing date. The ‘483 had a right to a term of 20 years from its filing date.

          The ‘375, issuing later could not and should not have any effect on the ‘483 either as a matter of constitutional policy or congressional policy.

          This case is simply wrong on every count. It is FUBAR.

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