Ending the Doctrine of Non-Statutory Double Patenting

In Boehringer Ingelheim Int’l v. Barr Labs and Mylan Pharma (Fed. Cir. 2010), the Federal Circuit made an interesting statement regarding the judicially created doctrine of obviousness-type double patenting — that the doctrine has been historically important.

The doctrine of obviousness-type double patenting is an important check on improper extension of patent rights through the use of divisional and continuation applications, at least for patents issued from applications filed prior to the amendment of 35 U.S.C. § 154 to create twenty-year terms running from the date of the earliest related application.

As suggested, the advent of a twenty-year term based on application priority date means that the justification for a double patenting rejection is largely becoming a moot-point.  And, I suspect that the court will eventually change the law by holding that a terminal disclaimer is not necessary if the two patent terms are already identical. A family of patents filed in the past decade will typically all have roughly the same ending-dates except for differences created by patent term extensions and adjustments (PTE & PTA). In my view, applicants should be allowed to take advantage of those extensions apart from any terminal disclaimer. The other hang-up with terminal disclaimers is that they require the two applications be commonly owned.

28 thoughts on “Ending the Doctrine of Non-Statutory Double Patenting

  1. 28

    I think the patent term of all family members which can be due to divisional or continuation appliocation should be based on the earliest priotity date

  2. 27

    Here’s some news:

    Advisory(3MAR2010): Please note that initial submissions for patent term extension under 35 U.S.C 156 are not permitted to be filed via EFS-Web. Accordingly, the document description “Patent Term Extension Application Under 35 USC 156” has been removed from EFS-Web. Registered eFilers may file second or subsequent submissions for patent term extension under 35 U.S.C 156 via EFS-Web using the document description “PTE Interim Patent Extension filed”.

  3. 26

    OTDP is here to stay. Some larger entities file several patent applications, not necessarily all at once, on an invention, and the several patent applications odtentimes take their own paths. Those paths may lead to claim scopes that are obvious variants, oftentimes unbeknownst to the entity or the entity’s legal rep, particularly for foreign-originated cases. Since the apps are not in the same family having the same effective filing date, the OTDP doctrine is necessary to truncate the longer term of one of the patents.

  4. 25

    Dennis, maybe a diligent, quantitatively-oriented researcher such as yourself could prove that the multiple assignee problem is real or an illusion.

    Since a terminal disclaimer to overcome OTDP must state that the patent is unenforceable if it becomes separated from its “twin,” I don’t think you need a quantitative study to determine that the multiple assignee problem is not significant today. Isn’t the real question what would happen if this barrier to separate assignment of obvious variations is taken away?

    Especially since 103(c) effectively says that you can claim obvious variants of your own stuff for up to 2.5 years, we might want to keep OTDP, or at least the unenforceability disclaimer. Just a thought.

  5. 24

    I think the Federal Circuit put OTDP on notice in Fallaux. (“It is true that the unjustified patent term extension justification for obviousness-type double patenting has limited force in this case. Indeed, this is surely true of many double patenting rejections today, in no small part because of the change in the Patent Act from a patent term of seventeen years from issuance to a term of twenty years from filing.”) Dennis, maybe a diligent, quantitatively-oriented researcher such as yourself could prove that the multiple assignee problem is real or an illusion.

  6. 23

    I think an accused infringer should be able to DJ the “other” patent, or move to dismiss a complaint involving only one of the two patents. There was a case like this recently where a party and law firm were sanctioned for bringing suit on the “second patent.”

  7. 22

    So now when a property owner attempts to enforce a property right it’s classified as harassment?

    When someone sues you twice for essentially the same claim, that’s always been classified as harassment.

  8. 20

    Bio, I think you need to reevaluate your position.

    Double patenting is based on 101, which states “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain A PATENT therefor, subject to the conditions and requirements of this title.”

    Thats A PATENT, not 10 PATENTS with trivially different claim language. That’s what ODP protects against.

    I’m sure there’s an analogy to be made with land and property rights, but I’ll leave it to you to come up with one.

  9. 19

    Prevent “harassment” by multiple assignees? So now when a property owner attempts to enforce a property right it’s classified as harassment?

    If that’s the last leg that OTDP is standing on, pull the plug already.

  10. 18

    Jeff, I tried that link to the Bob Armitage article but it didn’t work, and I couldn’t find the article on the IPO site. Can you check the link again?

    Try this: link to ipo.org

  11. 17

    another problem is you can be rejected under ODP if you have one inventor or one owner in common with the patent, but to file a TD common identity of ownership is required (iei not just one owner in common, but exactly the same owners). Thus one can be in a situation where the ODP rejection is made, but you can’t file a TD to get around it.

  12. 16

    How does this work?

    Claim 1 of patent A and Claim 1 of patent B are obvious variations of each other. Claim 1 of B is rejected as ODP over claim 1 of A. B issues with a terminal disclaimer over A. During litigation, Claim 1 of A is held invalid. In a sense, claim 1 has “expired.” Is Claim 1 of B enforceable at all pursuant to the terminal disclaimer?

    If this specific issue has been addressed, where. The Abbey case quoted above by ugh does not involve a terminal disclaimer?

    Stepping back, assuming A is prior art to B absent common ownership, B would never have issued to an independent 3d party. It issued because A is not prior art under 102 or 103; thus the double patenting rejection.

    Allowing multiple suits on essentially the same invention is the real problem of double patenting. I would think the better view is that if a Claim 1 falls of A, so does claim 1 of B. They are not like dependent claims in the same patent that are entitled to independent presumptions of validity.

  13. 15

    Jeff, I tried that link to the Bob Armitage article but it didn’t work, and I couldn’t find the article on the IPO site. Can you check the link again?

  14. 14

    “As suggested, the advent of a twenty-year term based on application priority date means that the justification for a double patenting rejection is largely becoming a moot-point.”

    Am I missing something here? What if the applications are not in the same family? For example, Patent A expires 2025, and patent application B, if granted today, would expire 2026. If B would unjustifiably extend A’s term (because B and A are obvious variants), then doesn’t this justify the need to have the ODB rejection?

    For non-family, i.e. non-related, patents and applications, the ODP doctrine is not moot at all, regardless of the 20-years-from-filing term, no?

  15. 13

    The issue of multiple patentee harrasement and an SNQ based on ODP is the main issue ongoing in the reexamination of Higuchi 6,814,934. The ‘934 patent is owned by Life and its patent patent owned by Roche so a terminal disclaimer is not possible. This has forced users or PCR customers to obtain multiple licenses and has been worth hundreds of millions each to both Life and Roche. There is an article on this subject by Bob Armitage of Lilly ()Robert A. Armitage, Everything You Ever Wanted to Know About Double Patenting . . . but Never Realized that You Needed to Ask (from the Makers of Prozac), (available at link to ipo.org). Also see In re Fallaux, Fed Cir. 2008-1545, 06 May 2009 that cites the Armitage article.

    In the Higuchi reexamination (control 90/010,131) the patentee tried to argue that ODP is not an SNQ when the examiner did a name search during prosecution. I don’t think that one will fly.

  16. 11

    “What prevents him from suing on Patent 2, an obvious variant?”

    issue and claim preclussion?

  17. 10

    Just a reminder that the “common ownership” provision of terminal disclaimers was exapanded on Sept. 14, 2005 to implement provisions of the CREATE Act of 2004. The change applies to applicants taking advantage of the “safe harbor” provisions of 35 U.S.C. 103(c) in obviousness-type double patenting cases.

    37 CFR 1.321(d) now requires terminal disclaimers to “(3) Include a provision waiving the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the patent or any patent granted on the application which formed the basis for the double patenting, and that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the patent, or any patent granted on the application, which formed the basis for the double patenting are not separately enforced.”

    H.R. Rpt. No. 108-425, at 6:
    “Congress intends that parties who seek to benefit from this Act to waive the right to enforce any patent separately from any earlier
    patent that would otherwise have formed the basis for an obviousness-type double patenting rejection. Further, Congress intends that parties with an interest in a patent that is granted solely on the basis of the amendments made pursuant to this Act to waive requirements for multiple licenses. In other words, the
    requirements under current law for parties to terminally disclaim interests in patents that would otherwise be invalid on “obviousness-type” double patenting grounds are to apply, mutatis mutandis, to the patents that may be issued in circumstances made possible by this Act.”

  18. 9

    If you don’t have the common ownership rule, wouldn’t re-exam become awkward? If A is found invalid on re-exam and A’ is owned by someone not involved in the re-exam, should the invalidity of A be regarded as res judicata for the the validity of A’ even if the assignee of A’ didn’t participate in (and possibly knew nothing about) the re-exam of A?

  19. 8

    Re: “..roughly the same ending-dates except for differences created by patent term extensions and adjustments (PTE & PTA).”
    In view of the large number and length of term extensions with current PTO backlogs, PLUS the number of double patenting rejections in voluntary divisonals, continutions and CIP’s that may have very different term extensions than their related applications, my guess would be that there are still lots of patents that will have quite different patent terms, for which double patenting defenses may well still be important?

  20. 7

    “What prevents him from suing on Patent 2, an obvious variant?”

    I would guess that PO would be more knowledgeable, based on the loss for patent 1, whether filing suit on patent 2 would be worth it.

    If PO decides its worth it, then the issues for consideration should be simpler, e.g. what is the difference between patent 1 (decided) and patent 2? Look to the related proceedings. But if patents 1 and 2 are not commonly owned, the related proceedings would probably not be known.

    “What if he sells both patents to a third party & that 3d party sues?”

    Same analysis as above.

  21. 6

    Assume a terminal disclaimer.

    PO sues on patent 1. Loses. What prevents him from suing on Patent 2, an obvious variant?

    What if he sells both patents to a third party & that 3d party sues?

    Seems there still is a problem.

  22. 5

    I have to go with the majority above, especially as illustrated by A Plurality. Maybe we don’t need the term limitation anymore, but it’s important to keep these patents owned by a single entity.

  23. 4

    I can see it now:

    “Want a piece of Google? Microsoft? Apple? We’ve got families of already-infringed patents, all priced to move. Each patent family has been tested in court, with one patent in each family already garnering a judgment in the hundreds of millions. So don’t wait! Buy a patent and sue today!”

  24. 3

    I have often questioned the propriety of the OTDP rejection in light of changes to the patent term. I believe that the calculating the patetn term from priority and the changes to 35 USC 154 vitiated the rationale for the adoption of the rule, as set forth by the CCPA and its successor, the Federal Circuit. Moreover, I belive that it is beyond doubt the requirment of co-ownership is no improper, because of the CREATE ACT. Congress has spoken and does not believe that ownership of patents should impair the validity and enforcement of the same in certain circumstances.

  25. 2

    I agree with Jules. I thought the whole point of ODP was to force the applicant to file a terminal disclaimer or find non-obvious subject matter to distinguish the child claims from the parent claims so that infringers wouldn’t be faced with multiple suits based on obvious variations of the same invention.

    device A
    device A comprising a housing
    device A comprising a transistor
    device A comprising an integrated circuit

    Without ODP, applicants can file as many apps as they want for what is in practical effect the same invention and sell each one to a different party.

    Now, from the standpoint of making my life as an examiner easier, getting rid of ODP would be great. It’s a pain to write up the rejections, and the applicants just file a terminal disclaimer or amend around them, so it always feels like you did a bunch of work for nothing. And life would sure be easy if half my work was simply rubber stamping obvious variations of cases I’ve already allowed. But I don’t think getting rid of ODP is in the public interest.

  26. 1

    “The other hang-up with terminal disclaimers is that they require the two applications be commonly owned.”

    I don’t get it. Isn’t common ownership part of the judicially created doctrine of ODP – in order to prevent harrassment by multiple assignees?

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