Addressing whether patent holders can use the 35 USC § 121
safe harbor on a self-help basis to avoid obviousness-type double
patenting, the US Court of Appeals for the Federal Circuit upheld a
Patent Trial and Appeal Board (PTAB) rejection based on such double
patenting. In re: Janssen Biotech, Inc., Case No. 17-1257
(Fed. Cir., Jan. 23, 2018) (Prost, CJ). The panel concluded that
once a patent issues on a continuation-in-part (CIP), rather than
as a divisional, with claims to subject matter outside the scope of
a restriction requirement, there is no safe harbor refuge from
double patenting.
Janssen filed a CIP claiming priority to an application that
ultimately matured into a patent. Both the CIP and the issued
patent disclosed and claimed priority through a series of
applications directed to antibodies specific to human tumor
necrosis factor alpha and a later application directed to
immunoreceptor molecules specific for tumor necrosis factor alpha
or beta. All
