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ARTICLE · 09 FEBRUARY 2018

Safe Harbor Against Double Patenting Cannot Be Obtained By Post Hoc Change

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In In re Janssen Biotech, Inc., No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit declined to allow a patent owner to retroactively qualify for the safe-harbor provision of 35 U.S.C. § 121 ...

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Sydney Kestle
Sydney Kestle
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In In re Janssen Biotech, Inc., No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit declined to allow a patent owner to retroactively qualify for the safe-harbor provision of 35 U.S.C. § 121 by attempting to re-designate a particular patent to overcome a double patenting rejection during reexamination.

During prosecution of a parent application, Janssen responded to a restriction requirement by abandoning the parent and filing a continuation-in-part application (CIP). The CIP claimed the benefit of both the abandoned parent and a second application. Twelve years after the CIP issued as a patent, the PTO reexamined the patent on double patenting grounds. In an attempt to trigger § 121's safe-harbor provision, Janssen cancelled all claims and disclosures not contained in its abandoned parent application. In doing so, Janssen requested that the patent's benefit claim to the second application be deleted and that the CIP that ripened into the now-challenged

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