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Obviousness Type Double Patenting Rule is Here to Stay

November 7, 2022 In Blog, Intellectual Property, Litigation, Patent, USPTO By Khushbu Shah

Obviousness Type Double Patenting Rule is Here to Stay

Article 1, Section 8, clause 8 of the U.S. Constitution gives Congress the power to “promote the [p]rogress of [s]cience and useful [a]rts, by securing for limited [t]imes to. . . [i]nventors the exclusive [r]ight to their respective. . . [d]iscoveries.” Congress, through 35 U.S.C. §§ 101, 102, and 103, has set out utility, novelty and obviousness requirements that an invention should have for inventors to obtain an exclusive right.[1]

35 U.S.C. § 101 expressly notes that an inventor can obtain only “one” patent for one invention.[2] When an inventor tries to get two patents covering the same invention, they are barred from doing so, as the practice would constitute double patenting under §101, which is often referred to as “statutory double patenting.”[3] Even when an inventor is not trying to patent the exact same invention, but rather an obvious variant of the invention, courts nonetheless forbid an inventor from doing so under obviousness-type double patenting (“OTDP”) (also referred to as “non-statutory double patenting”).[4]

OTDP is a judicially created doctrine intended to prevent an improper issuance to an inventor for a second invention that is not patentably distinct from the inventor’s first invention.[5] During patent prosecution, an examiner can issue an OTDP rejection if claims of the patent application being examined are not patentably distinct from the claims of another U.S. patent or even a pending patent application with a common inventor or patent owner.[6] However, an applicant can obviate such an OTDP rejection by filing a terminal disclaimer.[7] Filing a terminal disclaimer establishes permanent co-ownership of the two patents and disclaims any non-overlapping part of the term of the later-expiring patent so that both patents expire on the same date.[8] A terminal disclaimer does not, however, proffer any admission that the inventor’s later-filed patent is obvious.[9] It should also be noted that a terminal disclaimer used to obviate an OTDP rejection raised for a single claim of a later filed patent application truncates the term of the entire patent.[10]

During patent litigation, OTDP can present an affirmative defense for patent infringement cases as a ground for invalidating one or more claims of a patent.[11] When faced with such a defense, a patentee can show that the earlier-filed patent is patentably distinct from the later filed patent or can file a terminal disclaimer. But such a terminal disclaimer will only be accepted if the patentee files it prior to the expiration of the earlier-filed patent.[12] About 10% of the issued patents are tied to another patent via a terminal disclaimer.[13]

Critics of OTDP argue that it has no grounding in the Patent Act.[14] Such critics don’t find clear statutory language or legislative intent for “double patenting” in the Patent Act and no direct Congressional statute that denies full patent protection for cases covered under OTDP.[15] It has been argued that the courts have placed an inordinate amount of weight of the single letter “a” from §101 of 35 U.S.C. as the basis for a confused “double patenting” approach.[16]

This 20-year old doctrine of OTDP was recently questioned in SawStop Holding LLC v. USPTO.[17] In 2018, SawStop filed a patent application for a new band saw and later filed a continuation application for a variation of the saw.[18] The claims in the continuation were rejected by the USPTO for OTDP.[19] On appeal, SawStop argued that OTDP, a non-statutory form of double patenting, is improper because the judiciary does not have the authority to impose an additional condition of patentability—only the Congress can do this.[20] But the OTDP rejection was upheld by the USPTO Board and affirmed by the Federal Circuit.[21] SawStop, in its petition to the Supreme Court, raised the following questions: (1) “Does the judiciary have the authority to require a patent applicant to meet a condition for patentability not required by the Patent Act?” and (2) “Is the judicially created doctrine of non-statutory double patenting ultra vires?”[22] The US Supreme Court declined to review the Federal Circuit decision upholding OTDP.[23] Therefore, the judge-made OTDP rejection will continue to be at issue in prosecution and litigation.

Footnotes[+]

Khushbu Shah

Khushbu Shah, Ph.D. is a third-year evening J.D. candidate at Fordham University School of Law and a staff member of the Intellectual Property, Media & Entertainment Law Journal. She is a scientific advisor at Kramer Levin Naftalis & Frankel LLP. She has a Ph.D. in Medicinal Chemistry from Duquesne University and a Bachelors in Pharmaceutical Sciences from M.S. University, India.