PTAs, PTEs and Terminal Disclaimer Practice under In re Cellect
The Federal Circuit basically confirmed in In re Cellect that terminal disclaimers can knock out patent term adjustment (PTA). If you have patent term extension (PTE) and you filed a terminal disclaimer to overcome an obviousness-type double patenting (ODP) rejection, you can get the PTE term tacked onto the disclaimed date. However, in the case of PTA, the court says that PTA term gets added to the life of the patent first and then the terminal disclaimer goes into effect so that you have disclaimed the PTA term and any extended term such that the two patents now expire on the same date regardless of the PTA. In effect, terminal disclaimers may knock out PTA term.
What happens when you have both PTA and PTE? Your PTA may be eliminated but PTE can be added on after the disclaimed date.
Please watch our episode on Calculating Patent Term for a review of terminal disclaimers.
This decision does not mean you always lose all your PTAs due to filing a terminal disclaimer. Say your parent patent has a 20-year term from filing plus 100 days of PTA. The child patent issues with 150 days of PTA and a terminal disclaimer was necessary in the child patent. To calculate the PTAs of the child patent, you add the PTA days of the child patent (150 days) to the original expiration date of the parent’s. Then the terminal disclaimer goes into effect such that the two patents would expire on the same day. The child ends up losing only 50 days of PTA in this instance.
But what if the child patent only gets 50 days of PTA originally? In this instance, the terminal disclaimer does not affect the child’s 50 days of PTA, so it gets to keep those. But the child does not get an additional 50 days of PTA from the parent such that the two patents expire on the same date.
What happens if you don’t file a terminal disclaimer in a later filed patent in which the claims should have been rejected for ODP? Your rejected claims of the later filed patent are invalid and you have bupkis. That is what happened in Cellect. Cellect never got an ODP rejection during prosecution and, by the time it was raised during reexamination, all of the patents had expired. You can only file a terminal disclaimer during prosecution or during the life of the patent, such as in reexamination. And because Cellect never filed a terminal disclaimer, not only did they lose their PTAs, they lost all their rights because the claims are unpatentable due to ODP even though the ODP rejection was first raised during reexamination.
Just as a side note, I personally do not ever file terminal disclaimers until we have allowed claims. That is because claims are subject to change during prosecution such that the double patenting rejection can ultimately be rendered moot. ODP rejections are based on claims. In the Office Actions, you see these types of double patenting rejections show up as provisional rejections. They can be withdrawn as the claims are subject to change.
Filing Preemptive Disclaimers
The issue the Cellect decision leaves us with is that we now have to ask ourselves whether we should we be reviewing our entire patent portfolio to determine if we should be filing preemptive terminal disclaimers for cases that have not received an ODP rejection so that our claims do not end up getting invalidated during reexam as happened in this case.
Does that mean you and your client should try to identify all the potentially missed instances of ODP in light of Cellect? It is actually probably not feasible in most cases, depending on the size of your portfolio. However, ODP usually arises in cases of family patents or applications. So, you may want to flag all your families, both applications and granted patents, as potentially needing terminal disclaimers. The following suggestions are provided in light of the assumption that your client has already given you the go-ahead to file preemptive terminal disclaimers.
Disclaiming Relative to the Broadest Family Member
If it is clear which patent or application has the broadest claims (sometimes you and your client know when you wrote the claims that they are definitely the broadest of the family), you can consider filing terminal disclaimers just relative to the broadest family member. In Cellect’s case, the court found that the invalidation of all claims under ODP could be traced back to U.S. Patent No. 6,862,036 . Had they had the option, they could have tried to disclaim all the rejected claims in view of the ‘036 patent, which had no PTAs. So, if you want to make your life a little bit easier when you are dealing with a complicated family tree, you can consider filing terminal disclaimers in view of just the broadest potential reference.
Disclaiming Relative to the Earliest Filed Family Member
If it is not clear which is the broadest claim set, which is often the case, you can also consider filing terminal disclaimers in view of the earliest filed application. In Cellect’s case, the patents were all progeny of U.S. Patent No. 6,275,255 which also had no PTA. Cellect could have also disclaimed all their rejected claims in view of the main parent app, the ‘255 patent, had they had the option.
If your applications are still undergoing prosecution and have not yet issued, you do not know how many PTAs you will receive. But you can study the history of your applications to obtain a best guess as to which applications should receive more PTAs relative to the others and that can factor into your decision for selecting which reference application to be disclaimed relative to.
Utilizing Continuations to Preserve PTA
If your applications are still undergoing prosecution and you are facing an ODP rejection for an application for which you anticipate a lot of PTAs, you can file a continuation with a terminal disclaimer for the rejected claims so that you only disclaim term for the rejected claims. That way, you can preserve the PTAs for the remaining non-rejected claims. In Cellect, U.S. Patent 6,982,742 had four claims rejected in view of U.S. Patent 6,424,369. An option here would have been to cancel the claims 22, 42, 58 and 66 that were rejected in view of ODP and file a continuation covering just those claims along with a terminal disclaimer to overcome the ODP rejection. Now the rest of the rest of the claims of the ‘742 patent can go forward with the 726 days of PTA unaffected by the terminal disclaimer. This is in comparison to just filing a terminal disclaimer outright, in which case you would be losing all your PTAs for all your claims.
Reminder to Disclaim Term in the Later Filed Application
ODP can also arise in cases in which the relevant applications or patents are not part of the same family. When you have applications that do not share an earliest priority date, you should be filing terminal disclaimers in the later-filed application because that is the application having the term that is to be disclaimed. I have received ODP rejections only to realize the examiner raised the ODP rejection in the earlier filed case. They just saw two co-pending applications and decided to raise a double patenting rejection without looking at the dates. You should traverse the rejection in this instance and file a terminal disclaimer in the later-filed case because that is the case where you should be disclaiming term. Filing a terminal disclaimer in the earlier filed case is improper and would probably not shield you from invalidation. As we also learned from Cellect, equitable arguments to the tune of “we obviously were not trying to game the system, come on give us a break” don’t work.
Cellect might be taken up by an en banc panel. Who wants to see that happen? Tell us in the comments!
Watch the full episode of IP Practice Vlogs here.
Acknowledgements
The IP Practice Vlogs are created in collaboration with my partners at Global IP Counselors, LLP, Nomugi Tomoyori (video editing and styling) and David Tarnoff. My particular thanks to Dave for the many years of mentorship and tutelage. I hope I am as good of a teacher as you have been.
