In a significant turn of events, the Federal Circuit recently upheld a decision from the United States Patent and Trademark Office (PTO) to invalidate four interconnected patents on obviousness-type double patenting grounds (OTDP). This decision is noteworthy on the premise that all analyses of OTDP for patents, which were awarded a patent term adjustment (PTA) by the PTO, must be centered around an expiration date inclusive of the PTA.
The details about the case can be found in a report by Akin Gump Strauss Hauer & Feld LLP, on
JD Supra.
According to the clarification, this patent term adjustment impacts not only the life of the patent but also carries significant bearings on the patent’s validity under obviousness-type double patenting grounds.
Obviousness-type double patenting is a judicially created principle specific to U.S. law. The purpose of OTDP is to prevent unjust time extension of patent rights by prohibiting the issuance of the claims in a second patent that are not patentably distinct from the claims of a first patent.
- If the claims of a second patent are unpatentably similar to those claimed in a first patent and the second patent expires later than the first patent, a terminal disclaimer can fix the OTDP issue. This disclaimer enforces an expiration of the second patent on the same date as the first.
- In situations where the PTO overlooks the OTDP issue during examination, it has the authority to invalidate the problematic claims of the second patent in an ex parte reexamination.
This recent verdict has emphasised that when addressing an OTDP issue for a patent that was granted a PTA, the PTO should consider an expiration date which embeds the PTA. Recognised as a crucial point for companies invested in patent-heavy sectors, this forms the foreground for them to reassess the lifespan and validity of their patent portfolios.