First Patent Sets Maximum Patent Term For Later Patents Under Obviousness-Type Double Patenting

Many patent applicants have received an obviousness-type double patenting (ODP) rejection at some time. For example, the U.S. patent examiner may reject the pending claims for being "patentably indistinct" from other claims already found in an issued patent owned by the same applicant. The examiner issues this ODP rejection even though the earlier-issued patent is not valid prior art for a regular obviousness analysis. However, the examiner further notes that there is still hope to gain allowance of the claims. The ODP rejection is typically followed by a statement that it will be withdrawn if the patent applicant files a terminal disclaimer with payment of the corresponding USPTO fee. While this offer sounds advantageous to the applicant, the final price for this patent will be paid in terms of shortened patent term several years later. While this story describes the traditional process of overcoming ODP rejections, a recent court decision, Allergan USA, Inc. v. MSN