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January 26, 2010

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Comments

Kevin,

Very nice discussion of this case. Boehringer also argued that the "as a result of" requirement should only apply to the original patent (or its progeny) that were the basis for the double patenting issue, not the challenged patent. Reading the literal language of the 3rd sentence of 35 USC 121, I think Boehringer is correct. But from reading the majority's discussion, there appears to be too much precedential baggage to go that way now.

As you astutely point out, the majority opinion, in allowing restricted groups (or a portion thereof) to be collected in one divisional is a very practical result, and certainly consistent with the 3rd sentence of 35 USC 121. It also doesn't violate the spirit of not crossing the "demarcation line" regarding how the examiner restricted the groups in the first place. If the examiner in the divisional wants to further restrict between the collected groups, he/she can still do so.

By contrast, Judge Dyk's dissent simply exalts form over substance (something that SCOTUS does all too often in patent law, the MedImmune decision on DJs being an awful example of this in its effect on patent licensing negotiations). Most importantly for restriction practice, his dissent makes no practical sense to me because it creates all kinds of potentially costly (and complex) issues. For example, Dyk's view would require a separate divisional to be filed for each of the restricted groups. For Boehringer, that would have meant filing potentially 9 separate divisionals, with all the attendant expense and prosecution complexity. And if you fail to file a divisional on one of the restricted groups, you create a potential "disclosed but didn't claim" problem.

Dear EG:

Yes, but you can see the policy versus practicality dynamic here. Judge Dyk's interpretation will strike anyone who has ever done patent prosecution as being burdensome, but there are some middle grounds. For example, the applicant could inform the "new" examiner (of each of the divisional applications) about which claims fell within which groups in the original restriction requirement, perhaps inviting a similar restriction. But if none were forthcoming, or if the applicant made an argument about why claims from different groups should be examined together (presumably not that they were not patentably-distinct), then there would be an Office determination that could change (or at least vet) the issue.

Since these patents were all granted before the change in the patent term statute, the court properly discussed the traditional rationale for the safe harbor versus terminal disclaimers. Perhaps this is an issue that will fade, but in any event it is good that Judge Dyk's interpretation did not prevail. It reminded me of some of the provisions of the claims and continuation rules.

Thanks for the comment.

Regarding rights derived during the term of an extension under 35 USC 156, not clear why the court cited 156(d)(5)(F) (page 14 of opinion), which relates to INTERIM extensions (extensions granted while regulatory review is PENDING), instead of 156(b), which relates to extension based on COMPLETED regulatory review. The rights derived under the latter appear to be more expansive than those under the former. Page 6 of the opinion indicates that the rights derived are provided under 156(b).

Regarding the rights derived during a patent term extension, shouldn't the court have cited 35 USC 156(b) (extensions) rather than 35 USC 156(d) (interim extensions)? These differ substantially.

Dear John:

Thanks for pointing that out; there were some citation errors in the post that we are fixing.

But the court did cite 156(d)(5)(F) for the proposition, and you are right, it is curious. The extension was granted under Sec. 156(b), but they needed the language from Sec. 156(d)(5)(F) to make their point. Given their ultimate conclusion it doesn't make a difference to the outcome.

Thank you for catching this.

To re-post a question that I posted at Patently-O, can anyone explain why the CAFC feels compelled to decide more than it needs to decide? They could have resolved the safe harbor issue, and determined that the other issue was moot.

The only way they needed to reach both issues is if they were going to affirm the D/Ct. Instead, they issued a "holding" with respect to the terminal disclaimer issue, even though it was not necessary to the outcome of the case.

Dear Sean:

Hard to know, but maybe they went through the arguments to arrive at the 2-1 split on the consonance issue, and in doing so agreed that filing a terminal disclaimer was not acceptable after a patent had expired. Remember, they affirmed the district court on the terminal disclaimer issue, but reversed on the consonance issue. So it isn't as if they would come to the same decision on each issue.

But that's just a guess. Thanks for the comment.

Hello Mr. Noonan,
Why do you say that obviousness-type double patenting is an anachronism with the current patent term rules? Thank you.

Btw, asking about anachronism - I'm a different Sean. Thanks.

Dear Different Sean:

In the "old days," the fear was that a patentee would dribble out claims to obvious variants of an invention and get serial 17-year terms for different patents that would encompass (and thus provide infringement liability) to commercial embodiments of the invention, thus inequitably extending the term of exclusivity.

With the advent of the 20-year term from earliest filing date, this can no longer happen - patents claiming the same priority date expire on the same day (providing maintenance fees are paid, there are not differential PTA or PTE terms, etc.). Thus, I think the "main" purpose of the doctrine is not relevant to anything filed since June, 1995.

But the "being sued by different patentholders" rationale remains.

Thanks for the comment.

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