The Supreme Court denies Cellect LLC's petition for certiorari to consider whether patent term adjustment ("PTA") should be included in patent term for obviousness-type double patenting ("ODP") purposes.
On October 7, 2024, the U.S. Supreme Court denied the petition for certiorari filed by Cellect LLC in Cellect LLC v. Vidal, No. 23-1231. Cellect's petition was of interest to many in the patent community because it raised the question whether PTA, which is awarded due to U.S. Patent and Trademark Office delays, is included in patent term when determining whether the claims are obvious under the judicially created doctrine of ODP. Because the Supreme Court has denied review, the Federal Circuit's decision stands. The Federal Circuit found that PTA, unlike patent term extension, is included in patent term for purposes of the ODP analysis: "ODP for a patent that has received PTA … must be based on the expiration date of the patent after PTA has been added." In re Cellect, LLC, 81 F.4th 1216,1226, 1229 (Fed. Cir. 2023) (emphasis added).
However, the Federal Circuit's decision in In re Cellect did not address all aspects of the interplay between PTA and ODP. The Federal Circuit recently clarified that In re Cellect did not address under what circumstances a claim can properly serve as an ODP reference. Allergan USA, Inc. v. MSN Labs. Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024). In Allergan, the Federal Circuit held "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." Id. at 1369. The Federal Circuit stated that "[a]s the first-filed, first-issued patent in its family, it is the patent that sets the maximum period of exclusivity for the claimed subject matter and any patentably indistinct variants." Id. This leaves open the circumstances where a patent claim may not properly serve as an ODP reference.
In view of these two Federal Circuit decisions, patentees should revisit patent term expiration dates of patents with PTA for potential ODP issues; consider whether a patent with PTA is a first-filed, first-issued, later-expiring patent; and consider whether it may be appropriate to file terminal disclaimers. In addition, patent prosecutors should consider PTA accrual during prosecution of a patent application and later-filed continuing applications.
