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ARTICLE · 11 MAY 2024

Potentially Poisonous Patents

Marshall, Gerstein & Borun LLP
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Last summer, the Court of Appeals for the Federal Circuit upheld a U.S. Patent and Trademark Office decision, rejecting claims in the In re Cellect, LLC, case due to the doctrine of obviousness...

United StatesIntellectual Property
Sandip H. Patel
Sandip H. Patel
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Last summer, the Court of Appeals for the Federal Circuit upheld a U.S. Patent and Trademark Office decision, rejecting claims in the In re Cellect, LLC, case due to the doctrine of obviousness type double patenting (ODP). Understanding this complicated case is critical for patent owners, particularly universities relying on patents for licensing revenue, as it affects related patents expiring on different dates due to patent term adjustments (PTA).

Patent owners often obtain multiple patents for a single invention to maximize exclusivity and mitigate the consequences that some claims might be successfully challenged as invalid. The pace, however, at which the Patent Office reviews these patents can lead to some patents receiving PTA while others do not. This presents a complex scenario where, after Cellect, patents within the same family could potentially invalidate each other. This scenario demands careful management and strategic planning from university tech

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