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ARTICLE · 27 SEPTEMBER 2013

Federal Circuit Clarifies Double Patenting Safe Harbor Provision

Foley & Lardner LLP
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Earlier this month, in St. Jude Medical, Inc. v. Access Closure, Inc., No. 2012-1452 the Federal Circuit clarified the double patenting safe harbor provision in 35 U.S.C. § 121.

United StatesIntellectual Property
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Earlier this month, in St. Jude Medical, Inc. v. Access Closure, Inc., No. 2012-1452 (Sept. 11, 2013) the Federal Circuit clarified the double patenting safe harbor provision in 35 U.S.C. § 121. The safe harbor provision is designed to prevent the inherent unfairness that would occur if claims found to be patentably distinct by the examiner and required to be restricted and filed in a separate application could then be found invalid for double patenting if a court concluded the claims were not patentably distinct. The Court clarified the requirement that the patent must maintain consonance in order for the safe harbor provision to be applicable. This ruling is especially important to those prosecuting patents who may be making decisions about which claims to elect under a restriction requirement.

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