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Law360 | 5 Considerations For Obviousness-Type Double Patenting

October 18, 2024 – Law360

On Oct. 7, the U.S. Supreme Court denied certiorari for In re: Cellect. As it stands, In re: Cellect and the Aug. 13 decision in Allergan USA Inc. v. MSN Laboratories Private are the most recent opinions from the U.S. Court of Appeals for the Federal Circuit governing obviousness-type double patenting, or ODP.

According to the Federal Circuit's 2023 Cellect ruling, ODP arises

when the claims of a later-expiring patent [are] obvious over the claims of an earlier-expiring patent owned by the same party. If so, absent a terminal disclaimer, the later-expiring claims are invalid ... [ODP] prevent[s] a patentee from obtaining a timewise extension of patent for the same invention or an obvious modification thereof and prevents an inventor from claiming a second patent for claims that are not patentably distinct from the claims of a first patent.

While ODP can easily be resolved by filing a terminal disclaimer, doing so relinquishes the patent term. ODP appears to be en vogue: 9% of patents issued with terminal disclaimers in 2006 and more than 18% of patents have issued with terminal disclaimers in 2024.

This article provides an overview of the current state of ODP.

Click here to read the full article written by Fabian Koenigbauer first published in Law360.

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