Jonathan A. Platt

The Federal Circuit’s recent opinion in In re Cellect (2022-1293, August 28, 2023, https://cafc.uscourts.gov/opinions-orders/22-1293.OPINION.8-28-2023_2181381.pdf) invalidated in reexaminations four patents on related applications. The four patents had all received patent term adjustments (PTAs) under 35 USC 154, for delays during prosecution. They were invalidated on obviousness-type double patenting (ODP) grounds, based on a fifth related patent that had not received a PTA. The relevant patent family is shown below (the invalidated patents with PTAs are the ‘742, ‘369, ‘626, and ‘621 patents, and the one without the PTA is the ‘036 patent):

ODP is a judicially-created doctrine aimed at preventing fragmentation and temporal extension of patent rights, which might otherwise occur through the issuance of multiple patents issue with claims that are obvious variants of each other. When ODP is raised during prosecution, the applicant can file a terminal disclaimer, disclaiming any term which extends beyond that of an already-issued patent, and committing to maintain co-ownership of the multiple patents by the same entity (company or individual).

In the Cellent case the examiner was aware of the related applications during prosecution, but did not make any ODP rejections. Without any ODP rejections being made, the patentee saw no need to file any terminal disclaimers.

Before the Federal Circuit the patentee did not dispute that the five issued patents (including the four with PTAs) were obvious variants of one another. The Federal Circuit found that the PTAs impermissibly extended the time of the patentee’s coverage beyond the term of the ‘036 patent, the patent for which there was no patent term adjustment. In doing so the Federal Circuit treated PTAs differently than patent term extensions (PTEs) under 35 USC 156, for which the extension is calculated from the term as adjusted to take into account any terminal disclaimer. The different treatment for PTAs and PTEs is due to differences in the statutory language of the different provisions, with 35 USC 154 (providing for PTAs) including language that specifically addresses disclaimers.

So what should the patentee have done here? The examiner did not make any ODP rejections during prosecution, and the patentee argued that it should not be obligated to “file preemptive terminal disclaimers,” even in the absence of rejections by the examiner, in order “to avoid wholesale invalidation of related patents.” But the Federal circuit disagreed, stating that “it would frustrate the clear intent of Congress for applicants to benefit from their failure, or an examiner’s failure, to comply with established practice concerning ODP.” 

Short of filing preemptive terminal disclaimers, what is an applicant seeking multiple related patents to do? One route is suggested by another argument made by the patentee, that ODP in this case was not a “new issue of patentability” that could be raised in a reexamination, since ODP was presumably already considered by the examiner during initial examination. In rejecting this argument the Federal Circuit stated that the examiner’s knowledge of the related applications, and even his issuance of ODP rejections in other applications by the patentee, did “not affirmatively indicate that he considered ODP here.” An applicant, recognizing the situation of possible ODP issues, could press the examiner to affirmatively state on the record that he or she considered ODP issues for the related applications, and found the claims of the various applications patentably distinct from one another.

Another approach would be to put the claims to the various concepts in a single application, as opposed to filing and prosecuting related applications simultaneously. Either 1) all of the claims would be examined in that single application and issued in a single patent, removing the question of double patenting, or 2) the examiner would issue a restriction requirement, stating on the record that the claims address multiple independent and distinct inventions, and forcing the applicant to select one invention for prosecution in that application. Subsequent divisional applications directed to the other inventions could then be filed – the section covering divisional applications (35 USC 121) provides a “safe harbor” against ODP for such divisional applications.

Trying to obtain a family of patents is a tricky business, and there are pitfalls, some of them fatal, that can be encountered during prosecution. Expertise on the subject is well worth having when important patent rights are at stake.   

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