Will SawStop "Nick" OTDP?

Published date05 August 2022
Subject MatterIntellectual Property, Patent
Law FirmFinnegan, Henderson, Farabow, Garrett & Dunner, LLP
AuthorMr Aaron Gleaton, Adriana Burgy, Stacy Lewis and Thomas Irving

The United States Constitution states that Congress shall have the power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. See U.S. Const. art. I, ' 8, cl. 8.

Certain provisions in the Patent Act provide the conditions for patentability, namely 35 U.S.C. ' 101 (eligibility), 102 (novelty), 103 (non-obviousness), and 112 (written description, enablement, and definiteness). Those are all set forth by Congress in the Patent Act.

Based on the language in ' 101 that an inventor may only obtain "a patent" for his invention, statutory double patenting prohibits a patentee from obtaining two patents to the same invention. See, e.g., In re Goodman, 11 F.3d 1046, 1052 (Fed. Cir. 1993) ("If the claimed inventions are identical in scope, the proper rejection is under 35 U.S.C. ' 101 because an inventor is entitled to a single patent for an invention.").

As the case law developed over the years, however, courts established a second form of double patenting'non-statutory double patenting or "obviousness-type double patenting," often abbreviated as "OTDP." OTDP "is a judicially created doctrine adopted to prevent claims in separate applications or patents that do not recite the 'same' invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection." Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1373 (Fed. Cir. 2005). To obtain claims in a subsequent patent application shared by common owners, the application must recite claims that are "patentably distinct" from the earlier-filed patent. If not, OTDP seeks to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first patent.

Its exact date of origin is unclear, but likely the earliest judicial opinion discussing OTDP (and most oft cited) is Judge Giles Rich's concurrence in In re Zickendraht, 319 F.2d 225, 231 n.4 (CCPA 1963), in which he noted:

  1. Does the judiciary have the authority to require a patent applicant to meet a condition for patentability not required by the Patent Act?
  2. Is the judicially created doctrine of non-statutory double patenting ultra vires?

SawStop delineates statutory double patenting from OTDP, acknowledging that ' 101's provision that whoever invents an invention "may obtain a patent therefor" supports the restriction...

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