In the light of recent developments and court decisions, holders of patents need to reassess their patent strategy. The crucial case of In re Cellect signals an important shift, where granted patents could potentially be at risk of facing Post-Grant Double Patenting challenges. These challenges may result in the loss of the patent altogether or at a minimum, the forced terminal disclaimers of challenged patents.
This altering scenario comes into play when an applicant files a primary patent application with medium-to-narrow claim coverage, which subsequently issues with some or substantial patent term adjustment (PTA) due to one or more delays at the U.S. Patent and Trademark Office, as reported by BakerHostetler.
Litigators and in-house counsel should take note as this may have profound implications on the strategies employed to protect their client or company’s patent portfolio. It forces a consideration of whether it might be safer to file broader claims in initial applications, thereby potentially mitigating some of the risks of a post-grant double patenting challenge.
This post-grant double patenting issue isn’t an isolated case exclusive to the United States. It could potentially emerge as a trend in patent systems and patent litigation across the globe. Therefore, now might be the perfect time to reassess your playbook, ensuring your patent strategies maintain their effectiveness and your hard-fought patent rights remain intact and enforceable.
Victories in the courtrooms are often the result of proactive, forward-thinking strategizing rather than reactive measures. In the rapidly shifting world of patent law, patent holders and legal professionals need to stay one step ahead. By staying informed and prepared, you can ensure the value and longevity of your patents.