No Rest for the Prosecution: The Consequences of In re: Cellect
Patents are of vital importance to allow inventors to protect their works and drive their business forward.[1] However, Congress has determined that a patentee shall only be able to patent their inventions once.[2] Patentees who try to re-patent their inventions, or inventions with identical modifications, are met with resistance by statutory and judicially created law.[3]
What is Obviousness-Type Double Patenting?
Double patenting falls under two doctrines. Statutory double patenting precludes a patentee from obtaining additional patents on the same invention.[4] Courts have extended this prohibition to preclude additional patents on inventions that “would have been obvious from the subject matter of the claims in the first patent, in light of the prior art.”[5] This second doctrine of double patenting is known as obviousness-type double patenting (ODP).[6] The doctrine was created with the intention to cull patentees from attempting to extend their patent rights through a second invention that is patently indistinguishable from the former invention.[7] If a second patent is filed that would violate ODP, the applicant can reconcile the issue by filing a “terminal disclaimer,” agreeing to keep both patents in common ownership and that the second patent will expire on the same date as the first patent.[8] A terminal disclaimer cannot be filed if the earlier patent has expired.[9]
What is Patent Term Adjustment?
Patent Term Adjustment (PTA) was introduced by the American Inventors Protection Act of 1999 and was implemented by the United States Patent and Trademark Office (USPTO) in March of 2000.[10] The circumstances in which PTA can be granted are codified in 35 U.S.C. § 154(b).[11] These circumstances revolve around situations in which the USPTO delays issuing a patent, so that a patentee was afforded the full term of use for their patent.[12] This is due to the fact that a patent’s expiration date is measured twenty years from the date of filing in the United States, not the date of issuance.[13]
In re Cellect Holding
In re Cellect involves four patents directed to portable image sensors that were deemed unpatentable based on ODP.[14] These four patents all claim priority from a single patent, with two of them being continuations-in-part of the first patent directly, and the other two being continuations-in-part of the other two challenged patents.[15] Each of the four patents was granted a PTA and none were subject to a terminal disclaimer, so each would have expired after the expiration date of the first patent.[16]
The United States District Court for the District of Colorado determined that the challenged patents were “obvious variants of Cellect’s prior-expiring reference patent claims,” and thus, should be rejected for ODP[17] In an appeal to the USPTO Patent Trial and Appeal Board (Board), Cellect argued that ODP violations should be based on patent expiration dates before PTA has been added, but the Board held otherwise.[18] Cellect eventually appealed to the Federal Circuit.[19]
In its decision, the Federal Circuit agreed with the Board that ODP must be based on a patent’s expiration date after PTA has been added, and thus in this case, the asserted claims were correctly deemed unpatentable.[20] The Federal Circuit further held that filing terminal disclaimers would have solved the issue created by the multiple challenged patents.[21]. The Federal Circuit also made its decision by distinguishing how ODP applies to PTA versus patent term extension (PTE).[22] PTE is different from PTA in that the delay giving rise to the extension is caused by a regulatory agency review process instead of the patent office.[23] The Federal Circuit held that ODP can cut off granted PTA by rejecting Cellect’s case law based argument that because ODP cannot be used to cut off a patent term extension (PTE), ODP should not be able to cut off PTA.[24] The Federal Circuit further held that they should not just invalidate the adjustment, as this would be comparable to granting a retroactive terminal disclaimer.[25]
Implications on Patent Prosecutors
Part of the issue underlying Cellect’s case was that the Federal Circuit held that Cellect received an unjustified timewise extension of its patent terms.[26] However, this decision will still affect diligent applicants who in good faith received PTA for administrative delays by the USPTO during prosecution.[27] In light of this, patent prosecutors will likely be forced to more diligently assess ODP risks in a patent portfolio and file terminal disclaimers in advance.[28] This decision will most seriously affect industries where it is common practice to possess multiple patents stemming from a common application.[29] One of those industries is the life sciences, especially where “the most valuable years of patent exclusivity may be at the end of the patent term.”[30]
Footnotes
