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Potentially Poisonous Patents

headshot-2020.jpgSandip H. Patel
Guest Columnist

Last summer, the Court of Appeals for the Federal Circuit upheld a U.S. Patent and Trademark Office decision, rejecting claims in the In re Cellect, LLC, case due to the doctrine of obviousness type double patenting (ODP). Understanding this complicated case is critical for patent owners, particularly universities relying on patents for licensing revenue, as it affects related patents expiring on different dates due to patent term adjustments (PTA).
Patent owners often obtain multiple patents for a single invention to maximize exclusivity and mitigate the consequences that some claims might be successfully challenged as invalid. The pace, however, at which the Patent Office reviews these patents can lead to some patents receiving PTA while others do not. This presents a complex scenario where, after Cellect, patents within the same family could potentially invalidate each other. This scenario demands careful management and strategic planning from university tech transfer officials to navigate the implications for their patent strategies and protect their licensing revenue.
PTA compensates for Patent Office delays, extending patent terms, crucial for maximizing protection, especially for long-development technologies. ODP, a judicial doctrine, prevents extending exclusivity beyond a single patent's term by appropriately limiting the term of additional patents for the same or an obvious modification of an invention. This doctrine particularly affects related patents within the same family, where subsequent applications might not receive PTA because the Patent Office examined the patent without delays the earlier patents experienced.
The Cellect decision emphasized that ODP applies when a later-expiring patent’s claim would have been obvious over an earlier-expiring patent within the same family, even if a terminal disclaimer was never required during prosecution. This decision means patents might be vulnerable upon issuance in the absence of a terminal disclaimer, especially when different expiration dates due to PTA are involved.
University tech transfer officials must now consider filing terminal disclaimers for both target and reference patents within a family to avoid ODP or argue against it on merits through claim amendment or argument. This could mean sacrificing PTA benefits for ensuring patent validity, a challenging decision that might reduce potential licensing revenue.
Moreover, the decision complicates patent prosecution, urging patent owners to obtain as many claims as possible in a single patent to avoid ODP issues, considering that claims in later-issuing but earlier-expiring patents could potentially anticipate or render obvious claims in term-adjusted patents. This situation suggests a strategic shift might be necessary, including filing terminal disclaimers, abandoning child applications, or reissuing patents to include allowable claims.
For university tech transfer officials, the implications of Cellect require a thorough review of patent portfolios, particularly for licensed patents that received PTA. More strategic filing and prosecution will be paramount to maximize patent term while also mitigating invalidation risks due to ODP. The complexity of balancing PTA benefits against ODP risks requires more conscientious planning and comprehension of complex legal advice to navigate the post-Cellect patent landscape effectively.
Sandip H. Patel is a Partner at Marshall, Gerstein & Borun LLP. He has extensive experience in patent portfolio management, opinion counseling, litigation, and foreign oppositions in China, Europe, and Japan. Clients particularly value his extraordinary breadth of experience in resolving their most complex patent issues. He may be contacted at [email protected].
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney. Views expressed are those of the author and are not to be attributed to Marshall, Gerstein & Borun LLP or any of its former, present, or future clients.