Cast your mind back to your earliest memory. Mine is of little green bottles of Coca-Cola on the back seat of our Plymouth, out of gas, somewhere in southern Indiana. Now think about your grandfather’s earliest memory. I’m not sure what my grandfather’s first memory was, but Grover Cleveland was President and the Wright brothers had just opened their bicycle shop. Now consider the earliest memory of your grandfather’s great-grandfather. It probably involved large animals, flies, and the smells of agriculture. If your family is exceptionally long-lived, then we’re in the right time frame.
The year was 1819. Joseph Story,* who at 32 was the youngest Justice ever appointed to the U.S. Supreme Court, before or since, was working as a trial judge, riding circuit in Massachusetts. Justice Story decided a patent infringement lawsuit brought by Mr. Odione against the Amesbury Nail Factory. The inventor of Odione’s patent held multiple patents for the same invention. Justice Story held for the infringer, finding that “…the inventor can have but a single patent for his invention… .”
We now call this ‘obviousness-type double patenting’ and it’s been part of the law, well, since 1819. The purpose of obviousness-type double patenting is to preserve the philosophy behind patents – the inventor gets a monopoly on his invention for a limited period of time (14 years in Justice Story’s day), while the public learns about the invention and gets the right to make, use and sell the invention after the patent expires. If an inventor could serially apply for multiple patents for the same invention, then the inventor could extend the patent monopoly forever. The public would never receive its end of the bargain.
All well and good, but obviousness-type double patenting is not now and has never been in the patent statute. It has always been judicial ‘doctrine;’ that is, law made by judges.
Wait a minute, you say. Why should I, an inventor and patent owner, care about some bit of patent arcana? The answer: because it can determine whether your patent – the one on which you built your business and your life – is valid and enforceable.
A typical modern application of obviousness-type double patenting occurs when an inventor applies for a patent and later makes improvements and files a second patent application for the invention with the improvements. If the improved invention is an obvious variant of the original invention, then the patent examiner will issue an obviousness-type double patenting rejection.
Yikes! What to do? What’s important in obviousness-type double patenting is the expiration date of the patents. The patent owner can overcome the obviousness-type patenting rejection by filing a ‘terminal disclaimer.’ A terminal disclaimer means that the expiration date of the later-filed patent will be the same as the earlier-filed patent. There’s no extension of the patent term, so the public receives the full value of the patent bargain. The accepted practice, like FOREVER, is that applicants only submit a terminal disclaimer when the patent examiner issues an obviousness-type double patenting rejection.
But changes to the patent statute complicated matters. The duration of a utility patent is now 20 years from the date of first application. The problem is that the USPTO can take a long time to review an application, time that eats into the period of patent protection. So Congress added a fix – if the USPTO takes more than three years to review an application, or if the USPTO misses review milestones without fault of the applicant, then the term of the patent is extended by the period of the USPTO’s delay. Patent term extensions are very common. Your patent may well have one.
All of which sets up a conflict between the statute, with its extension of the patent term for USPTO delay, and obviousness-type double patenting, which limits the term of a patent.
The Federal Circuit Court threw a very large wrench in the works in the case of In Re: Cellect, LLC. Cellect owned four patents, all claiming priority back to the same application. Because of USPTO delays, three of the patents had patent term extensions and varying expiration dates. The examiner did not issue obvious-type double patenting rejections and Cellect did not file terminal disclaimers. Cellect pursued infringement litigation of the four patents. In the meantime, the four patents expired due to the passage of time. The Federal Circuit found that the extended patent terms invalidated the extended patents due to obviousness-type double patenting and that Cellect could not file terminal disclaimers because the patents had expired.
Think about that. Cellect, acting in all good faith, following best practices as understood by everyone, with excellent patents for good inventions, had its head handed to it on a platter. Cellect walked into a trap that did not exist before the USPTO and the Federal Circuit created it, long after Cellect received its patents and which Cellect was powerless to avoid. The result is unfair, to say the least.
So why should you, a patent owner, care? In short, Cellect’s situation is far from unique. There are SEVERAL HUNDRED THOUSAND patent families in exactly the same situation as Cellect.
Cellect’s petition to the U.S. Supreme Court is currently pending. The United States filed a brief supporting the USPTO’s position that obviousness-type double patenting trumps patent term extensions due to USPTO delay. Of note, the Federal Circuit subsequently issued the Allergan USA v. MSN Labs decision on August 13, 2024, that reduces, but does not eliminate, the impacts of its Cellect decision.
The Supreme Court may provide relief to all those at-risk patent owners, but don’t count on it. Now all patent families MUST be reviewed to shorten their expiration dates to that of the first patent in the family. Which, of course, defeats the purpose of patent term extensions for USPTO delay. It may be arcane, but your business’s life may depend on it.
*Justice Story was among the most influential jurists of the early Republic. He wrote the 1841 Amistad decision freeing and repatriating African mutineers on the ship Amistad who were illegally kidnapped into slavery, finding that the kidnapped mutineers were not, and had never been, slaves.
Robert Yarbrough, Esq.