In a significant recent ruling, the Federal Circuit stated that differences in expiration dates among a patent family due to Patent Term Adjustments (PTAs) are allowable grounds for an Obviousness-Type Double Patenting (ODP) invalidity challenge against those members with later expiration dates. This element of patent law is not often in the spotlight, but can have significant implications for corporations and law firms alike.
The basis of this decision is found within the concept of Double Patenting. These legal rules aim to prevent the extension of the patent term’s length by prohibiting the issuance of two patents for what is essentially the same invention. Any party attempting to challenge a patent on these grounds is claiming that the issuance of two patents was unnecessary, as the invention is the same, or merely an obvious variant of the previously patented invention.
PTAs, in contrast, extend the term of a patent beyond the standard 20 years. PTAs can be used as a compensation mechanism for delays caused by the United States Patent and Trademark Office (USPTO) during the patent examination process. The ruling indicates that when PTAs create discrepancies amongst the expiration dates of a patent family, it becomes possible for earlier-expiring family patents to become the basis for an ODP challenge against their later-expiring equivalents.
This news could substantially alter the course of patent infringement lawsuits and influence strategic decision-making in Intellectual Property (IP). Companies and law firms dealing with patents need to understand the potential implications of this ruling on their current IP portfolios as well as future patent applications. It is highly advisable to seek expert guidance on this matter.
You can access the full text of the Federal Circuit ruling by clicking here.