The PTAB Weighs In On Obvious-Type Double Patenting And PTA

• Published date: 16 May 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P
• Author: Mr Richard D. Kelly

Congress sought to keep Patent Office delays from prejudicing a patentee by granting PTA to compensate for the Patent Office delays. While one might expect the Patent Office to work mightily to avoid administrative delays in prosecution, today the average time to first action is about 17 months, three months longer than the target of 14 months adding on average 3 months to the patent term. Other delays during prosecution add still more time to the PTA period. Since these are averages, the additional time can be significant. In pharmaceuticals the PTA added for delays of even a few months can mean hundreds of millions of dollars in revenue. The two district courts have addressed this issue where an ODP defense is raised against the later expiring patent because of PTA and came to different conclusions. See Mitsubishi Tanabe Pharma Corp. v. Sandoz, Inc., 533 F. Supp. 3d 170 (D.N.J. 2021) (the judicially created ODP does not trump the statutory PTA) and Mitsubishi. Magna Elecs., Inc. v. TRW Automotive Holdings Corp., No. 12-cv-654, 2015 WL 11430786 (W.D. Mich. Dec. 10, 2015) (ODP trumps PTA).

The PTAB weighed in on this issue in deciding the appeal in Ex parte Cellect in Appeal 2021-00528 (Cellect) that PTA trumps ODP, that is ODP denies the patentee the benefit of PTA. In Cellect the PTAB that claims 25-29 and 33 of U.S. Patent No. 7,002,621 ('621) were not patentable because of double patenting over U.S. Patent No. 6,452,626 ('626). The two patents shared a common parent application serial number 08/944,322, filed October 6, 1997, now U.S. Patent No. 5,929,901 ('901) and ''621 claimed continuation-in-part status to '626. Thus the '621 examiner was aware of the earlier application during its examination but did not issue an ODP rejection.

In ex parte Examination the USPTO issued an ODP rejection even though the original examiner did not find ODP. Based on the record, it appears that the examiner could have made the rejection but did not. Because of USPTO delays the '621 patent received 759 days of PTA while '626 received only 59 days resulting in the two patents expiring at different times instead of simultaneously as the applicant chose by its filing strategy. The relationship was illustrated by the PTAB as:

The PTAB rejected the approach of the district court in Mitsubishi based primarily on its reading of 35 U.S.C. ' 154 and 156, Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367, 1373-74 (Fed. Cir. 2018) (Ezra) as well on equitable grounds which was the...