In a recent decision by the Federal Circuit, the long-standing practice of adapting terms for patents may be at risk of drastic changes. Specifically, under the doctrine of obviousness-type double patenting (ODP), term-adjusted patents can now be invalidated by earlier-expiring patents in the same patent family. The significant case under discussion is In re Cellect.
This ruling has far-reaching implications for patent owners, especially for those who choose to patent one aspect of their invention first, then receive a patent term adjustment (PTA) due to delays at the Patent Office, and subsequently patent additional inventions included in the original application. The earlier-expiring patents now have the potential to negate the term adjustments awarded for later patents and put them in jeopardy of pre-term expiration.
Primarily, the recent decision in In re Cellect confirms the validity of the doctrine of double patenting within the context of adjusted patent terms and highlights a potential area of complex legal navigation for patent owners hoping to optimize their term adjustments. While the patent process is often lengthy and bureaucratic, methods such as early patent claims and term adjustments have been typically used to expedite and optimize patent longevity. However, with the recent decision, such strategies may require significant reconsideration and overhaul.
Walking through the legal intricacies, obviousness-type double patenting (ODP) seeks to prevent the extension of patent life by the filing of several patents by the same patentee with claims of obvious variances. To highlight, under the ODP doctrine, an earlier-expiring patent can invalidate a term-adjusted patent in the same patent family. This concept can now act as a speed bump for patent owners aiming for a PTA.
While the In re Cellect case is still likely to be subject to future litigation and analysis, major law firms and corporations ought to consider the implications of this ruling on their patent strategies. With the potential inability to capitalize on term adjustments in the patent application process, corporations may find it increasingly important to reevaluate the sequential filing of patent applications and the interaction of their inventions within patent families, while simultaneously keenly monitoring the pace of their Patent Office dealings to avoid any potential risk of premature patent expiration.