In a recent ruling, the U.S. Court of Appeals for the Federal Circuit has placed the burden on patent owners to disclaim patent terms, or otherwise risk facing allegations of double-patenting. The ruling came on August 28, 2023, in the case of In re Cellect, Appeal No. 2022-1293.
The Court evaluated for the first time how statutorily authorized patent term adjustments interact with the judge-made doctrine of obviousness-type double patenting. By declaring all of the patents at issue invalid, it has offered significant insight to legal practitioners regarding the complications linked with receiving patent term adjustments. Specifically, these adjustments become especially problematic on certain patents that aren’t subjected to terminal disclaimers.
While the Federal Circuit’s ruling provides clarity, it also underscores the necessity for patent owners to have a strategic approach when dealing with patent term adjustments. Evaluating the viability of patents under the lens of this ruling could help prevent unnecessary litigations around allegations of double-patenting.
For legal practitioners in corporation and law firms, it’s advisable to remain abreast with these latest court rulings. Practitioners must work with patent owners to draw strategies that not only protect the legal standing of the patent but also steer clear from issues of double-patenting which can potentially invalidate the patents.