Obvious Type Double Patenting (“ODP”) is a court-created doctrine1 intended to prevent the unjustified extension of the right of exclusion granted by a patent.2 See In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013). The Court of Appeals for the Federal Circuit (“CAFC”) has considered the applicability of the ODP many times over the past decade, but the ODP has its roots in decisions of the CAFC’s predecessor , the Court of Customs and Patent Appeals (“CCPA”).
Indeed, the CAFC recently noted that “[t]The prohibition of double patenting is a long-standing doctrine of patent law” that federal courts have applied “for more than a century”. Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1212 (Fed. Cir. 2014). As part of our continuing series of analysis of CCPA precedent, this article analyzes several key CCPA decisions regarding the ODP that have contributed to current ODP jurisprudence. Although we focus on a handful of key decisions, the CCPA issued many opinions regarding the ODP that remain binding precedent and, therefore, relevant today.3
Current ODP case law has its origins in Justice Rich’s agreement in In re Zickendraht, 319 F.2d 225 (CCPA 1963). In that case, the Examiner rejected the claims of a pending application because they were patentably indistinguishable from the claims of a previously issued patent with the same named inventor. Zickendraht, 319 F.2d at 226-227. Finding that the differences in the claims were not patentably distinct, the CCPA upheld the rejection, concluding that “there is only one patentable invention”. ID. at 228. Concurring, Justice Rich agreed that the claims should have been dismissed for double patenting, but disagreed with the basis for the court’s conclusion. Identifier. at 229. He explained that “[t]there is an important difference between the situation where an invention is claimed twice and the situation, as here, where there are two inventions and one is not patentable over the other.” ID. at 230-31. He summarized the rule as follows: “claims of inventions closely related to the invention claimed in a patent and which cannot be distinguished from it by a patent must be included in the same patent unless the applicant has been constrained to do them in a separate application by a restriction requirement.” Identifier. at 232. Although he avoided commenting on the impact that a terminal disclaimer might have had in this case, Justice Rich noted that a plaintiff may be able to avoid a double patent rejection by filing a terminal disclaimer.
CCPA has had occasion to consider the impact of a final disclaimer on In re Robeson, 331 F.2d 610 (CCPA 1964). In that case, the Examiner rejected the claims of a pending application because they were patentably indistinguishable from the claims of an earlier patent issued by the same named inventor, despite the fact that the plaintiff had filed a final waiver. Robeson, 331 F.2d at pages 611-613. The Court began by explaining that one of the “fundamental principles underlying the patent system” is that “when the right of exclusion granted by a patent expires at the end of the term, the public must be free to use the invention as well as obvious modifications or improvements thereto. Identifier.at 614. Thus, granting a second patent for an obvious variation deprives the public of those rights.” Identifier. However, in overturning the Examiner’s rejection of the double patent, the Court explained that a terminal disclaimer precludes any extension because the second patent would expire simultaneously with the first. Identifier.
A few years later, the CCAC rendered its decision in In re Vogel, 422 F.2d 438 (CCPA 1970). This case is one of the most frequently cited ODP cases by the CCPA, which is likely due, at least in part, to its clear overview of the two-pronged analysis of double patenting. Vogel, 422 F.2d at 441. First, the Court asks whether the same invention (ie identical subject matter) is claimed twice. If the answer is yes, then 35 USC § 101 prohibits the issuance of a second patent.
Identifier. This is also known as legal double patenting.
However, if the same invention is not claimed twice, the Court considers whether the application claims an obvious variant of the invention claimed in the previously granted patent.
Identifier. If the answer is no, there is no double patenting and a final disclaimer is not required. Identifier.If the answer is yes, then a terminal disclaimer is needed to prevent an undue extension of the right to exclude.
Whereas Zickendraht, Robesonand Vogelunderlie current ODP case law, there are several other cases that practitioners should be aware of and keep in their toolbox should they face an ODP argument by a reviewer, before the Trial Board. Patent Proceedings and Appeals (PTAB), in the District Court or in the International Trade Commission. For instance, In re Baird, 348 F.2d 974 (CCPA 1965) is a useful case against an ODP argument that relies on the previously issued patent specification. The Court in Baird explained that “the patent disclosure does not form part of the ‘state of the art’ and cannot be taken as what it teaches”. Baird348 F.2d at 979. The specification may be considered to the extent necessary to understand what the words in the claim mean, but nothing more.
Identifier. at 979-80.
As another example, In re Sarett, 327 F.2d 1004 (CCPA 1964) is a useful case for a party facing an ODP argument for a claim that is subsumed or “dominated by” the claims of the ODP reference (e.g., a species claim against a gender claim). In this case, the application included a claim to a specific oxidizing agent while the previously issued patent claimed an oxidizing agent in general. Sarett327 F.2d at 1014. The Court explained that the claims – one to a broad genus and the other to a narrow species – were clearly distinct and the Examiner erred in rejecting the claims simply because they were subsumed or dominated by the claims of the previously granted patent.
Identifier. at 1014-15.
As a final example, In re Boylan, 392 F.2d 1017 (CCPA 1968) is a useful case against an ODP argument for a method of use claim where the referring patent contains claims directed to a composition that could beused in the method. In this case, the application claimed a method for inhibiting foaming in an aqueous system. Boylan392 F.2d at 1019. The claims of the previously issued patent were directed to an antifoam composition or to a method of making an antifoam composition. Identifier. at 1019. The Court explained that the claims were on different, albeit related, topics and therefore the ODP’s rejection was inappropriate. Identifier. at 1022-23. The Court further explained that the Examiner erred in concluding that a double patent rejection was appropriate simply because the patented composition could be used in the claimed process.
These are just a few examples of cases decided long ago by the CCPA that remain relevant today. The CCPA has rendered numerous decisions regarding the applicability of obvious double patenting in various circumstances, including those that still arise today. Since these decisions remain good law, it is beneficial for practitioners to familiarize themselves with CCPA cases so that they have the cases at their disposal to overcome ODP rejections and attacks.
1. In contrast, double patenting of the same invention is rooted in 35 USC §101 which permits one patent per invention (“Anyone who invents or discovers…may obtain
a patent for this purpose.” (accent added).
2. The prohibition of multiple patents on obvious variants is a principle developed in the light of this statutory rule.
Abbvie, Inc. v Kennedy Institute of Rheumatology Trust764 F.3d 1366, 1372 (Fed. Cir. 2014) (“‘a rejection based on obvious double patenting’ is ‘based on public order (a policy reflected in patent law)'”) .
3. Between 1963 and 1982, the CCAC rendered a significant number of decisions concerning the ODP. The vast majority of these decisions have not been overturned by the CCAC or overturned by a
bench Court of Appeals for the Federal Circuit (“CAFC”) and therefore remain binding precedent. See South Corp. vs. United States, 690 F.2d 1368, 1369 (Fed. Cir. 1982). Notably, many involved calls from ex parte lawsuits and are cited in the MPEP and, therefore, can be particularly useful in responding to reviewer rejections.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.