Double Standard for Double Patenting

Key Takeaway: After In re Cellect and Allergan v. MSN clarified the application of obviousness-type double patenting in the context of patent term adjustment, a new question has emerged: Can an obviousness-type double patenting rejection rest solely on the risk of harassment, even when no patent term is extended? The USPTO’s Appeals Review Panel has answered yes. The Federal Circuit is now poised to address that question in In re Ablynx.

Introduction

Obviousness-type double patenting (ODP) is a judicially created doctrine to prevent patentees from improperly extending exclusivity by obtaining successive patents on obvious variants of an invention. The doctrine rests on two rationales: preventing an unjustified extension of patent exclusivity and protecting accused infringers from harassment by different assignees of patents claiming patentably indistinct inventions. A terminal disclaimer generally addresses both concerns by disclaiming any term extending beyond the reference