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ARTICLE · 31 AUGUST 2023

Patent Term Adjustments In Jeopardy After In Re Cellect

WilmerHale
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This week's Federal Circuit decision confirms that term-adjusted patents can be invalidated by earlier-expiring patents in the same patent family under the obviousness-type double patenting (ODP) doctrine.

United StatesIntellectual Property
Timothy A. Cook
Timothy A. Cook
Deric X. Geng
Deric X. Geng
Emily Whelan
Emily Whelan
Akkad Y. Moussa
Akkad Y. Moussa
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This week's Federal Circuit decision confirms that term-adjusted patents can be invalidated by earlier-expiring patents in the same patent family under the obviousness-type double patenting (ODP) doctrine. This ruling is significant for patent owners who obtain claims covering one aspect of their invention first, receive patent term adjustment (PTA) because of Patent Office delays with that first application, and then patent additional inventions disclosed in the original application in continuations. The Cellect decision means that these later applications may invalidate the main patent's PTA and reduce its patent term.

Patent professionals should closely monitor this case. Petitions for rehearing are due on October 12, 2023, and amicus briefs are due on October 26, 2023. Companies should also revisit their patent prosecution strategies to reduce the risk of intra-family ODP challenges and to minimize their reliance on PTA when other options are available.

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