In a crucial first-time judgement, the United States Court of Appeals for the Federal Circuit addresses how patent term adjustments (PTAs) interact with obviousness-type double patenting (ODP). The court concluded that, within a patent family encompassing different expiration dates owing to PTAs, the earlier expiring family members can be utilized as a basis for an ODP invalidity challenge against the later expiring family members. This verdict was imparted in relation to the In re Cellect, LLC case, with case numbers 2022-1293; -1294; -1295; -1296.
Federal Circuit Judges Lourie and Dyk were involved in this precedent-setting decision. This ruling highlights the complex interplay between PTAs, designed to compensate for USPTO-caused delays in the patent’s issuance, and ODP, a doctrine aimed at preventing unjust term extensions in ‘common owned’ patent portfolios.
The Court’s interpretation signifies a shift in how patent term adjustments are seen to interact with instances of ‘double patenting’. Traditionally, the doctrine of double patenting is designed to prevent a patentee from extending the monopoly on a particular invention by applying for a second patent covering the same subject matter. However, PTAs enable a patentee to extend the term of a patent to account for delays attributable to the US Patent and Trademark Office. The question of how these two concepts interplay had been an area of legal ambiguity.
This judgement offers a fresh perspective, suggesting that PTAs can indeed affect the determination of double patenting. This shift potentially impacts how corporations and law firms view and manage their IP portfolios. It’s an additional factor that those involved in patent prosecution and portfolio management will need to consider. As such, legal professionals, especially those dealing with patent portfolios, are advised to stay informed and adapt their practices accordingly.