Saul Ewing LLP
This Such a strategy would allow subsequent child applications to claim priority to the same parent application without fear of invalidation of the parent application based on obviousness-type double patenting (ODP) with respect to child applications.
* Proper divisionals are now even more desirable with implications for filing strategy and restriction practice, so drafting claims designed to elicit a restriction requirement may be prudent.
* Be sure to consider ODP implications before allowing a patent claiming an obvious variant of an earlier-filed patent to issue if it does not share a priority date with the earlier-filed patent, especially if the earlier-filed patent has the longer term, for example by an award of PTA, because this will fall outside the safe harbor created by Allergan.
The State of the Law
The judicial doctrine of obviousness-type double patenting (ODP) stems from 35 U.S.C. The O Important In This A Terminal Terminal disclaimers require common ownership between the applications/patents in question, in order to avoid the potential for a defendant to face multiple plaintiffs asserting similar patents.
Filing a terminal disclaimer is typically only a problem when the patent owner is forced to give up a significant amount of valuable patent term in order to preserve the validity of some of its patents over other of its patents. The This PTA is an extension of the patent term to compensate the applicant for certain delays incurred by the USPTO during prosecution.
The issuance of Allergan USA v. MSN Labs, 24-1061 (Fed. Cir. August In Cir. Cir All To the relief of patent holders, Allergan 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.
Accordingly, terminal disclaimers will generally not need to be filed to preserve the validity of a first-filed, first-issued patent over continuation applications claiming priority to that patent and, therefore, the first-filed, first-issued patent in a family will enjoy the maximum term for all patents in the family claiming obvious variants of that first patent, in regard to ODP. Allergan offers no protection for an applicant’s patents that do not share a priority date.
Strategic Implications
Intellectual property owners may wish to consider the following as they align their behavior with the incentives created by Cellect and Allergan:
* Be sure to consider ODP implications before allowing a later-filed patent claiming an obvious variant to issue if it does not share a priority date with an earlier-filed patent, especially if the earlier filed patent has the longer term, for example by an award of PTA, because this will fall outside the safe harbor created by Allergan.
* Likewise, if two parallel related applications are filed on the same day, applicants should consider the likelihood of one of them receiving PTA that could be wiped out if you have to file a terminal disclaimer over the other.
* Proper divisional applications (e.g., in response to a restriction requirement and styled as a divisional application rather than a continuation) continue to be desirable with implications for filing strategy and restriction practice, so drafting claims designed to elicit a restriction requirement may be prudent.
* Patentees should strive to file highly comprehensive applications that consider as many features and aspects of the invention as possible so that subsequent child applications can claim priority to the same application without fear of invalidation of the parent application based on ODP with respect to the children. It In If Consider The claims rejected under ODP can always be pursued in a new continuation/divisional application.
