In Re Cellect: What's The Issue And What To Expect

What Congress has guaranteed, the courts have taken away

The Supreme Court is about to receive a Petition for Certiorari in a case that impacts how long a patent protects new inventions, we expect. Specifically, the case addresses the Patent Term Adjustment (PTA) provisions—which are Congressional guarantees that add time back to a patent's life to compensate for situations where the U.S. Patent Office improperly delays its examination—and how the judicially-created doctrine of Obviousness Type Double Patenting (ODP) now undermines those guarantees.

Here's what you need to know:

• Normally, members of the same family have the same expiration date – which is based upon 20-years from their common application priority date. In re Cellect, however, held that ODP applies between patents in the same family where those patents have different expiration dates solely because of PTA, rendering the later-expiring patents invalid because of their PTA.