What Inventors and Attorneys Need to Know About the Federal Circuit’s Ruling in In re Cellect
In August of 2023, the Federal Circuit issued a noteworthy decision pertaining to the interplay between patent term adjustment, terminal disclaimers, and obviousness-type double patenting in the world of patent law. The Court held that “claims in the challenged patents are entitled to their full term, including the duly granted patent term adjustment, unless they are found to be later-filed obvious variations of earlier-filed, commonly owned claims.” In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023).
The ruling has implications for both lawyers drafting patent applications as well as those defending patents from third-party challenges, as savvy patent attorneys will look to apply the resulting doctrines on either side of patent challenges — either in defense of one’s own patent or to circumnavigate another’s.
What is Patent Term Adjustment?
Delays during the examination of a patent application in the U. S. Patent and Trademark Office may be detrimental to applicants. Patent term adjustment allows the term of a U.S. patent to be extended, with the intent being to compensate for delays in the U. S. Patent and Trademark Office during the prosecution period. The time period calculated under patent term adjustment is added to the twenty-year lifespan of the issued U.S. patent.
What is Obviousness-Type Double Patenting?
Obviousness-type double patenting originates from 35 U.S.C. 101, which states that an inventor may obtain “a patent” (single) for an invention. Obviousness-type double patenting is a judicially created doctrine that prevents inventors from obtaining multiple patents for claims that are not patentably distinct from the claims in a prior or “parent” patent. The policy aims to ensure that a patentee does not obtain multiple patents on a single invention in order to improperly extend the patent term. The U. S. Patent and Trademark Office generally requires that applicants file a terminal disclaimer in order to overcome a rejection for obviousness-type double patenting. The terminal disclaimer functions as a mechanism to cut short the time period (or patent term) extending beyond the expiry of the statutory term of the parent patent.
The Case
In the instant matter, Cellect had two patents in the same family undergoing examination in the U. S. Patent and Trademark Office. One of the patents passed through the Office quickly, while the other was delayed. The delayed patent received additional term under patent term adjustment. The second patent application suffered from obviousness-type double patenting. Thus, the two Cellect patents that would have otherwise expired on the same day were separated by patent term adjustment added to the term of one of the patents. In its panel decision, the Federal Circuit held that Cellect should have filed a terminal disclaimer (in the delayed patent) to disclaim the portion added by the statutory term adjustment. In the presence of obviousness-type double patenting, the extended patent term granted through patent term adjustment should be eliminated by a terminal disclaimer. Because the patentee did not file a terminal disclaimer, the U.S. Patent and Trademark Office properly found that the claims were invalid under the non-statutory doctrine of obviousness-type double patenting.
Outcome and Takeaways
The U.S. Patent and Trademark Office filed a response to Cellect’s appeal in December of 2023, supporting the Federal Circuit’s decision. In January 2024, the Court of Appeals for the Federal Circuit denied Cellect’s petition for rehearing with a full bench in this matter. With the petition for rehearing denied, the Federal Circuit’s decision remains.
For patent practitioners in post-grant proceedings, obviousness-type double patenting continues to serve as a mechanism for invalidating patents. Whether that presents an opportunity, or a vulnerability depends on which side of the patent dispute you happen to be on — and whether you have taken due caution with your patent portfolio management practices.
For practitioners drafting patent applications, pursuing multiple embodiments in a single application, resulting in restriction requirement and divisional applications, may provide a strategic advantage over related applications pursued concurrently.
Whether holding existing patents or preparing to apply for new patent protection, inventors should reach out to their patent attorney representation to clarify how this ruling may impact their intellectual property assets.