Tag Archives: PTA

Old Dog, New Tricks: Government Defends 200-Year-Old ODP Doctrine Even Under Modern Statutes

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by Dennis Crouch

The debate over obviousness type double patenting continues.  Most recently, the U.S. Government has filed its brief in opposition to certiorari in Cellect v. Vidal. 

In its decision, the Federal Circuit ruled that the Congressionally mandated "patent term guarantee" that adjusts patent term to account for undue USPTO delay (known as PTA) triggers a risk that a later-expiring patent will be invalidated due to obviousness-type double  patenting (ODP). The Government brief consistently defends and agrees with the CAFC's decision -- arguing primarily (1) that ODP is an ancient patent tradition (much like eligibility) and (2) applying ODP to PTA is supported by the statute.

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Double Trouble: IPO asks for Supreme Court review of PTA/ODP Cellect dispute

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by Dennis Crouch

A second amicus brief has been filed - this one from the Intellectual Property Owners Association (IPO) - encouraging the Supreme Court to grant certiorari in Cellect, LLC v. Vidal, No. 23-1231. The case concerns the interplay between the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b), and the judicially-created doctrine of obviousness-type double patenting (ODP).

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Patent Term Adjustment and Obviousness-Type Double Patenting: Cellect’s Bid for Supreme Court Review

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by Dennis Crouch

The Federal Circuit's August 2023 decision in In re Cellect, LLC has set-up a significant question regarding the interplay between the patent term adjustment (PTA) statute, 35 U.S.C. § 154(b), and the judicially-created doctrine of obviousness-type double patenting (OTDP). Now, Cellect is seeking Supreme Court review, recently filing a petition for an extension of time that also indicated its intent to file. Cellect's petition is now due May 20, 2024, and I expect significant support from the patent owner community.

Patentees often receive PTA due to USPTO delays that otherwise eat into the 20-year patent term.  A fundamental issue in Cellect boils down to whether a patentee must forfeit their PTA term extensions to avoid an OTDP invalidity finding.  This comes up in situations where a patentee has two patents that cover only slightly different inventions.  Most often this is seen in family-member continuation applications, but it can also arise when applicants file several applications all within a short period.

Under the judge-made law of OTDP

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