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Obviousness-type double patenting: A trap for the unwary

Obviousness-type double patenting (ODP) is a judicially created doctrine that prohibits extending a right of exclusivity to subject matter claimed in a later issuing patent if an earlier patent claims subject matter that is not patentably distinct.

ODP does not bar issuance of a patent if a terminal disclaimer (TD) is filed by the patentee promising that the later issuing patent will expire on the same day as the earlier patent and will be commonly owned. The right to file a TD, and its effects, can make ODP a trap that can catch the unwary.

ODP can exist in a later issuing patent application if it shares with the earlier patent at least one inventor, one assignee, or, in special circumstances, common activities undertaken within the scope of a joint research agreement. The Federal Circuit recently affirmed in In re Hubbell, that ODP can exist if there are different owners but an inventor in common. Once ODP is found to exist, the only remedy, besides cancelling the rejected claims, is filing the TD. A TD, however, only can be filed where there is common ownership, i.e. all owners/assignees are the same. When ODP is based on the presence of different owners but a common inventor, ODP will preclude issuance of the later patent.

A policy behind this incongruent result is to prevent harassment of an infringer by multiple assignees asserting essentially the same patent. The same policy exists under the joint research agreement exception. Under this exception, a TD in a later issuing patent that is not commonly owned with the earlier patent can be filed for claims that are the result of activities undertaken within the scope of a joint research agreement between the two owners, but only if a promise is made waiving the right of either patent owner to separately enforce the patents. ODP can irretrievably limit the issuance and enforceability of patents to different owners. This result can occur when the later issuing application includes claims that overlap with the earlier patent.

Even when a TD can be filed, the waiver of patent term can be a serious penalty. Patent term can be shortened where the later issuing patent has a later priority date than the earlier patent and/or is entitled to an adjustment that lengthens patent term. The TD also promises common ownership during the course of the patent, which may affect future deals or sales of IP assets. Filing a TD that is not warranted can undermine the value of a patent.

It is prudent that patentees and practitioners consider ODP when developing a business and patenting strategy. For example, agreements with third parties that include provisions to assign patent rights to one of the parties can avoid ODP problems that occur with different owners. To the extent possible, companies also should track the patents of previous inventor/employees that could raise ODP issues. Also, prosecuting and obtaining issuance of generic claims before specific claims can avoid the necessity of a TD.

-Submitted by Karen Potter and Stephanie Seidman, McKenna Long & Aldridge.

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