Recent U.S. Court Case Puts Some Patents In Mortal Danger Under a judicially-created doctrine of U.S. law termed “Obvious-type Double Patenting,” a patentee cannot obtain two patents with claims that would be obvious in view of one another unless those patents are “tied together” with a Terminal Disclaimer. A Terminal Disclaimer is a legally binding notice by the Patentee stating that the patents will be owned by the same entity, and expire at the same time. This prevents the patentee from transferring one of the patents on essentially the same invention to another entity, suing an infringer with the first patent, and then the same infringer being sued by the other entity on the transferred second patent. Under U.S. law, patents are entitled to patent term extensions where there is a delay by the patent office in prosecuting the application. This creates a situation where some patents in a family might have longer patent terms. A Terminal Disclaimer may negate any patent term extension if a patentee is forced to file one for two different patents in the same family. Until recently, it was sufficient to file a Terminal Disclaimer in one patent to tie two patents together. An example of this is where a parent patent issues having patent term extension, and a later child application issues having no patent term extension. As long as there was a Terminal Disclaimer filed in the child application stating that it would expire no later than that of the parent, that was considered sufficient, and the parent could have a longer term than the child patent, despite the Terminal Disclaimer in the child patent. The U.S. Federal Circuit recently held that a two-way filing of Terminal Disclaimers may be applicable, i.e., that a Terminal Disclaimer needs to be filed in both patents. (Gilead Sciences v. Natco Pharma Ltd., (Fed. Cir. 2014).) In the example above, this would mean that the parent patent (i.e., the one with patent term extension) would now need to expire at the same time as the child (i.e., the patent without patent term extension). Suddenly, the parent patent will now die an earlier death due to the need to file a Terminal Disclaimer to the child patent. This has dramatic implications on the pharmaceutical industry, where days and weeks of paten term could translate to millions of dollars. The implications of the court decision are being explored by the industry, but the once benign doctrine of Obvious-type Double Patenting is now receiving much more attention.
Posted on: Thu, 01 May 2014 23:50:46 +0000
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