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ARTICLE · 01 SEPTEMBER 2023

Federal Circuit Invalidates Patent Term Adjustments For Obviousness-Type Double Patenting

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The Federal Circuit has issued a unanimous precedential decision holding that a patent whose term was extended through Patent Term Adjustment...

United StatesIntellectual Property
Scott A. McMurry
Scott A. McMurry
Ryan Babcock
Ryan Babcock
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The Federal Circuit has issued a unanimous precedential decision holding that a patent whose term was extended through Patent Term Adjustment ("PTA") can be invalidated for obviousness-type double patenting ("ODP"), affirming the PTAB's Ex Parte Cellect decision that we discussed in a previous post. The Court agreed with the PTAB that ODP should be assessed after PTA is applied to a patent, meaning that PTA does not protect a patent from ODP.

In the holding, the Court rejected Cellect's and amici's argument that statutorily mandated extensions like PTA "cannot be cut short by a judge-made doctrine like ODP," refusing to extend to PTA the Court's holding in Novartis v. Ezra Ventures that PTE is immune from ODP. The Court called that argument "an unjustified attempt to force disparate statutes into one." The Court approved of the USPTO's different interpretations of the PTA and PTE statutes (35 U.S.C. §§ 154, 156) as setting forth different frameworks, based on their

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