Goodlatte Proposes An Obviousness Type Double Patenting Statute

One of the provisions of the Innovation Act introduced by Congressman Goodlatte (R-VA) on October 23, 2014, purports to codify the doctrine of obviousness-type double patenting for applications and patents examined under the first-inventor-to-file regime. However, the proposed statutory language appears to both go too far (including possibly making double patenting a basis for inter partes review) and not far enough in its attempt to carry forward the judicially-created doctrine.

The Proposed Statute

Section 9(d) of the Innovation Act would add the following statute:

§ 106. Prior art in cases of double patenting

A claimed invention of a patent issued under section 151 (referred to as the 'first patent') that is not prior art to a claimed invention of another patent (referred to as the 'second patent') shall be considered prior art to the claimed invention of the second patent for the purpose of determining the nonobviousness of the claimed invention of the second patent under section 103 if— (1) the claimed invention of the first patent was effectively filed under section 102(d) on or before the effective filing date of the claimed invention of the second patent; (2) either— (A) the first patent and second patent name the same inventor; or (B) the claimed invention of the first patent would constitute prior art to the claimed invention of the second patent under section 102(a)(2) if an exception under section 102(b)(2) were deemed to be inapplicable and the claimed invention of the first patent was, or were deemed to be, effectively filed under section 102(d) before the effective filing date of the claimed invention of the second patent; and (3) the patentee of the second patent has not disclaimed the rights to enforce the second patent independently from, and beyond the statutory term of, the first patent.

What Does This Mean?

The statute defines the circumstances under which "the claimed invention" of a "first" patent can be cited against a "second" patent for the purpose of determining the nonobviousness of the claimed invention of the second patent under section 103. The requirements are set forth in the opening paragraph and in clauses (1) - (3), which each must be satisfied.

The opening paragraph would limit "first" patents (e.g., patents that can be asserted in an obviousness-type double patenting rejection against a second patent) to patents that do not otherwise qualify as prior art against the second patent. On the other hand...