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March 10, 2008


The court overlooked the last sentence of section 121, which implies that a divisional may be a CIP. That sentence reads, "If a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention." If a divisional is always directed "solely to subject matter described in the original application," then this sentence is irrelevant and has no meaning, which is not preferred in statutory construction.

Dear Louis:

Yes, we (and others) have considered that sentence, and it does seem to indicate the possibility of an application being both a divisional and a CIP. But another way of parsing the language would be if a CIP was filed with claims solely directed to (and supported by) subject matter disclosed and (originally) claims in the parent, then no new oath/declaration is required.

Looking at it that way, the excess disclosure in the '068 patent, particularly regarding the specific synthesis of celecoxib (which was disclosed but not exemplified in the parent), as well as the Court's understanding that the COX selectivity was an important aspect of the method claims (having decided on the best mode question that selectivity didn't matter for the compound claims) might have made the CIP disclosure of the selectivity of celecoxib a factor in the decision.

Of course, once again there seem to be case-specific facts used to construe the statute, and in a way that is contrary to sound rules of statutory construction (as you point out).

Thanks for the comment.

Perhaps it's more appropriate to say that Judge Dyk references HIS three-prong test for inequitable conduct articulated in Ferring. It's not clear to me that other judges on the Federal Circuit have adopted this quasi-burden-shifting approach to the issue, despite Judge Michel's willingness to join the Dyk opinion.

The double patenting result seems fair, though. Otherwise, section 121 becomes a loophole whereby the patentee can use a CIP to enable MOT claims that were arguably not enabled in the originally filed application.

Dear Bob:

Well, remember the Supremes didn't grant cert on Ferring, so for now I think the combination of Ferring + Pfizer + no cert means this test is at least in play as precedent, and being a "prong" test it is organizing for the arguments in a way that may make it attractive.

With regard to the Sec. 121 issue, perhaps a better way is to ask the question, no matter what you call it are the claims at issue (ALL the claims) originally filed in the parent that was subject to the restriction requirement, and were those claims supported in the specification satisfying Sec. 112? If the answers are YES, then I think you are entitled to the safe harbor, and the issue you raise does not apply.

Thanks for the comment.

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