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ARTICLE · 11 NOVEMBER 2013

Goodlatte Proposes An Obviousness Type Double Patenting Statute

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One of the provisions of the Innovation Act introduced by Congressman Goodlatte on October 23, 2014, purports to codify the doctrine of obviousness-type double patenting for applications and patents examined under the first-inventor-to-file regime.

United StatesIntellectual Property
Courtenay Brinckerhoff
Courtenay Brinckerhoff
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One of the provisions of the Innovation Act introduced by Congressman Goodlatte (R-VA) on October 23, 2014, purports to codify the doctrine of obviousness-type double patenting for applications and patents examined under the first-inventor-to-file regime. However, the proposed statutory language appears to both go too far (including possibly making double patenting a basis for inter partes review) and not far enough in its attempt to carry forward the judicially-created doctrine.

The Proposed Statute

Section 9(d) of the Innovation Act would add the following statute:

§ 106. Prior art in cases of double patenting

A claimed invention of a patent issued under section 151 (referred to as the 'first patent') that is not prior art to a claimed invention of another patent (referred to as the 'second patent') shall be considered prior art to the claimed invention of the second patent for the purpose of determining the nonobviousness of the claimed invention of

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