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March 31, 2008

Comments

The article omits the reason that the CAFC found the CIP ('068) invalid for obvious double patenting reasons over the DIV ('165. The CIP claimed methods for using the claimed compositions claimed in the DIV and that has been held to be obvious by the CAFC.
Thus, CIPs are not per se invalidated by earlier patents in the family; it depends on what is claimed in the CIP.

Dear Charles: You are correct, but it's hard to think of what could be claimed in a CIP that would not be invalid under ODP under the Teva rationale. Thanks for the comment.

Here is one situation that might avoid the ODP under the Teva rationale:

File PARENT APPLICATION with the claims:

1. Method for doing X by administering Y.

2. Method for doing A by administering Y.

3. Product Y made by [specific synthetic process].

RECEIVE 3-WAY RESTRICTION REQUIREMENT

PROSECUTE claim 3 in PARENT APPLICATION

FILE CIP with added EXAMPLES (but EXAMPLES not NEEDED for 35 USC 112 support) and LET PARENT APPLICATION go ABANDONED -- only after CIP timely filed

RECEIVE ANOTHER 3-WAY RESTRICTION REQUIREMENT TO THE SAME CLAIMS 1-3.

FILE DIVISIONAL to CLAIM 1 and SECURE METHOD PATENT.

TIMELY FILE DIVISIONAL to CLAIM 2 and SECURE METHOD PATENT.

TIMELY FILE DIVISIONAL to CLAIM 3 and secure COMPOSITION PATENT.

Here, even though the CIP was filed, the information added in the CIP was not necessary for support of claims 1-3.

It would seem that under this scenario, even if the PATENTS to Method CLAIMS 1-2 EXPIRED, the Compostion CLAIM 3 PATENT can still be enforceable BECAUSE EVEN THOUGH IT IS A CIP, it is the EQUIVALENT of a DIVISIONAL of the PARENT APPLICATION because its claims were fully supported in the PARENT APPLICATION.

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