USPTO Stands Firm that Patent Term Adjustment Creates Double Patenting Risk

by Dennis Crouch

It is OTDP week at Patently-O.  The USPTO recently filed its response to Cellect’s en banc petition. In the case, the Federal Circuit affirmed a PTAB finding that Cellect’s patent claims are invalid for obviousness-type double patenting (OTDP). See In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023). The USPTO argues that the panel’s decision properly applied precedent and OTDP principles. Cellect USPTO Response to En Banc Petition.

The primary focus of OTDP is to protect against a patentee from unduly extending its patent term by obtaining successive obvious-variant patents.  Most of the time, a patentee’s obvious-variants are family members that expire on the same date based upon the 20-year-from-filing patent term. But, sometimes the expiration date of a family member can vary greatly because of Patent Term Adjustment (PTA) that has been added to account for USPTO delays in granting the patent and required by Congress in the “Patent Term Guarantee Act.”

The focus of Cellect is whether the PTAB was correct in holding that a patentee’s extra term due to PTA in one of several patents triggers an OTDP invalidation of the extended patent. In Cellect, the court affirmed that principle — even while distinguishing PTA from the parallel “patent term extension” (PTE) that can be added to patent term to account for regulatory approval delay.  PTA counts for double patenting; PTE doesn’t.  Cellect has challenged this ruling in its petition for en banc review.

In its brief, the USPTO highlighted that  PTA differently than PTE, the USPTO contends that the panel correctly distinguished the two statutes. Specifically, the Director highlights that 35 U.S.C. §154 contains an express limitation on PTA for patents that have been terminally disclaimed, providing that “[n]o patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.” In re Cellect, 81 F.4th at 1227; 35 U.S.C. §154(b)(2)(B). As the USPTO explains, no similar limitation exists in the statute governing PTE, indicating Congressional intent to treat PTA and PTE differently for ODP purposes.

The USPTO further disputes Cellect’s assertion that the panel ignored the PTA statute’s “guarantee” of a 17-year patent term, clarifying that 35 U.S.C. §154(b)’s “patent term guarantees” are expressly “subject to” limitations, including the terminal disclaimer provision. Thus, according to the USPTO, an applicant who engages in continued examination, for example, may not receive the full 17 years of PTA.

A substantial portion of the USPTO’s brief centers on policy rationales underlying obviousness-type double patenting (ODP). Specifically, the Director rebuts Cellect’s contentions that the panel misapplied ODP principles and “eviscerated” the doctrine’s equitable purpose.

Regarding Cellect’s assertion that the panel improperly equated statutory patent term adjustment (PTA) with an unjustified term extension, the USPTO emphasizes Cellect’s admission that its claims recite obvious variants of its earlier expiring claims. Given this concession, the USPTO argues any PTA granted to Cellect beyond those claims’ expiration constitutes an improper timewise extension of its rights over admittedly indistinct subject matter.  The Director contends holding otherwise would effectively grant undeserved PTA to Cellect’s reference claims.

Further, the USPTO defends the panel’s determination that Cellect’s promise not to divide ownership of its patents failed to alleviate concerns over potential harassment by multiple assignees. On this point, the Director states “promises do not substitute for sound applications of rules of law” in protecting the public against Cellect separately licensing its indistinct patents to different entities. The Director notes Cellect could have filed such a disclaimer at any time before its reference claims expired but failed to do so.

Although the petition in this case is interesting and financially important, I expect that the Federal Circuit will deny the petition and move forward with this stronger application of the OTDP rule.