The CCPA's Influence On Obviousness-Type Double Patenting Jurisprudence

• Published date: 15 August 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Caitlin E. O'Connell, Amanda Murphy, Thomas Irving and Stacy Lewis

Obviousness-type double patenting ("ODP") is a judicially-created doctrine¹ intended to prevent the unjustified extension of the right to exclude granted by a patent.² See In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013). The Court of Appeals for the Federal Circuit ("CAFC") has addressed the applicability of ODP several times in the last decade, but ODP finds its roots in decisions from the CAFC's predecessor, the Court of Customs and Patent Appeals ("CCPA").

Indeed, the CAFC recently noted that "[t]he prohibition against double patenting is a longstanding doctrine of patent law" that federal courts have applied "for over a century." Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1212 (Fed. Cir. 2014). As part of our continuing series analyzing CCPA precedent, this article analyzes several key CCPA decisions regarding ODP that contributed to today's ODP jurisprudence. While we will be focusing on a handful of key decisions, the CCPA issued numerous opinions concerning ODP that remain binding precedent and, therefore, relevant today.³

Today's ODP case law traces its origins to Judge Rich's concurrence in In re Zickendraht, 319 F.2d 225 (C.C.P.A. 1963). In that case, the Examiner rejected the claims of a pending application because they were not patentably distinguishable from the claims in an earlier-issued patent having the same named inventor. Zickendraht, 319 F.2d at 226-27. Finding that the differences in the claims were not patentably distinct, the CCPA affirmed the rejection, concluding that "there is but one patentable invention." Id. at 228. In concurrence, Judge Rich agreed that the claims should have been rejected for double patenting but disagreed with the basis for the court's conclusion. Id. at 229. He explained that "[t]here is an important difference between the situation where there is one invention being twice claimed and the situation, as here, where there are two inventions and one is unpatentable over the other." Id. at 230-31. He summarized the rule as follows: "claims to inventions closely related to the invention claimed in a patent and not patentably distinguishable therefrom must be included in the same patent unless the applicant has been forced to make them in a separate application by a requirement of restriction." Id. at 232. While he avoided opining on the impact a terminal disclaimer might have had in this case, Judge Rich did note that an applicant may be able to avoid a double patenting rejection by filing a...