Key Takeaways:
- By default, members of the same patent family have the same expiration date – which is 20 years from the earliest-filed non-provisional application in the family. Based upon Cellect, however, if a patent in that family receives PTA, then that later-expiring patent may be invalid for ODP over other patents in the famiiy.
- The only currently recognized exception appears to be that “a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date.”
- Because the Supreme Court denied certiorari in Cellect, Congressional “guarantees” against undue Patent Office delays are limited.
- The Cellect decision broke with precedent to eliminate any equitable considerations. Equity is no longer a requirement of ODP analysis.
On October 7, 2024, the Supreme Court declined to hear
Cellect LLC v. Vidal, No. 23-1231. The case has been followed closely by patent professionals ever since the Federal Circuit upended the judicially-created doctrine of non-statutory obvious-type double patenting (ODP), holding that one member of a patent family could serve as an invalidating ODP reference for another family member if they do not expire at the same time because of Patent Office delays. Congress has mandated that the Patent Office extend a patent’s term with so-called Patent Term Adjustment (PTA) when the Patent Office delays review of a patent application beyond certain statutory guaranteed time limits, which can cause family members to expire at different time.
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Background
Cellect, supported by seven amici,2 challenged the Federal Circuit August 28, 2023, decision holding that patents subject to statutory PTA could be invalidated based upon ODP using earlier-expiring patent family members, with no or less PTA, as the invaliding reference. In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023). ODP is one of two types of double patenting – (i) statutory or “same invention” double patenting under 35 U.S.C. § 101, which prevents two patents claiming the exact same invention; and (ii) the judicially created ODP, which prohibits a single patentee from receiving multiple patents for obvious variants of an invention. Historically, ODP invalidates a later-filed variant patent when an invention is claimed in an earlier patent by the same inventor and the later variant’s claims are not “patentably distinct” from those of the earlier patent.
Precedent shows that ODP was created out of public policy concerns, as an equitable matter to prevent situations where obvious variant patents were being obtained as a result of a patentee’s “gamesmanship.” Two inequities resulted from these tactics: (i) under prior law, it allowed patentees to improperly extend patent exclusivity for the same invention because previously a patent’s term was measured from when it issued; and (ii) separately owned patents create the risk of harassment by multiple plaintiffs if not commonly owned (although this is a less common issue). Patent Law recognizes that a patent owner can generally overcome ODP by filing a “terminal disclaimer” that surrenders any patent term that extends beyond the earlier expiring patent, and agreeing not to enforce any subject patent unless all the subject patents are commonly owned.
In 1995, Congress enacted the Uruguay Round Agreements Act (“URAA”), which, among other changes, amended how a patent’s term is calculated. Previously patents expired 17 years after issuance, but under URAA patents expire 20 years from the earliest claimed priority date, regardless of how long it takes a patent to issue. Congress was concerned that undue Patent Office examination delays would waste patent term, and so it guaranteed certain examination deadlines. If the Patent Office failed to meet those deadlines, then the patentee would be compensated with added patent term – referred to as PTA.
In practice, PTA is one of two significant statutory regimes for adding patent term. The other is called Patent Term Extension (“PTE”), 35 U.S.C. §156, which similarly compensates patentees for government delay, this time delay in marketing a claimed invention that requires Food & Drug Administration (FDA) approval. The Federal Circuit previously held that ODP does not invalidate a patent for having a longer term than a patentably-indistinct reference patent if that additional term arises because of PTE. Novartis v. Ezra, 909 F.3d 1367, 1373 (Fed. Cir. 2018). In other words, the ODP analysis looks at a patent’s pre-PTE term—when the patent would expire before PTE is added.
Cellect has argued that (1) PTA must be treated similarly to PTE because both schemes are mandatory statutory grants meant to compensate a patentee for government delay; and (2) PTAB failed to consider the equities as part of its ODP in its analysis and any PTA-extending delay was solely due to the Patent Office’s failure to deliver on Congressionally mandated deadlines.3 The Federal Circuit, however, distinguished PTE and PTA based upon how the two statutes are worded (so the Novartis decision on PTE did not apply to PTA) and rejected Cellect’s equitable arguments, holding that any extension of patent term—regardless of reason—is “unjust,” 81 F.4th at 1230 (“[G]ood faith during prosecution does not entitle [Cellect] to a patent term to which it otherwise is not entitled.”).
The government, supported by one amicus brief, focused on the PTA statute’s reference to terminal disclaimers – a statutory difference between the PTA and PTE statutes – to support the Federal Circuit’s position and oppose cert. It also argued that Cellect’s petition should be denied because the question presented is not “sufficiently important,” in light of an August 13, 2024 Federal Circuit decision – oddly, by the same panel as decided Cellect – that cabins the Cellect decision, holding “a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date.” The government’s opposition also traced the history of double-patenting to find support for continued application of ODP, quoting Miller v. Eagle Mfg. Co., 151 U.S. 186, 197 (1894): “two valid patents for the same invention cannot be granted either to the same or to a different party.” In other words, the government argued, ODP is not a judge-made doctrine run amok (despite the decision calling ODP a judicially created doctrine). Rather, Miller, subsequent double-patenting jurisprudence, and the Patent Act itself prove that ODP is grounded in the origins of the patent system.
1 The PTA provisions appear at 35 U.S.C. §154. See our prior posts dated May 15, 2024, May 28, 2024, and August 27, 2024 for further information and explanation of PTA and issue in this case.
2 The Foley Hoag LLP attorneys authoring this alert filed amicus briefs on behalf of the New York Intellectual Property Association (NYIPLA) supporting rehearing at the Federal Circuit and certiorari.
3 Some Amici also added other issues, such as whether ODP has outlived its usefulness.
