Obviousness-type double patenting (ODP) is non-statutory and is intended to prevent an inventor from extending a patent’s life by having two patents on the same invention. The issue can arise between pending applications, between a patent and one or more pending applications, and even between multiple patents.
On April 22, 2014, in Gilead Sciences Inc. v. Natco Pharma Ltd., the Federal Circuit extended the scope of ODP by holding that a later-granted patent was able to render invalid an earlier-granted, commonly owned (but unrelated) patent with patentably indistinct claims. In this case, two U.S. patents were filed on different dates, and issued on different dates. These two patents did not claim priority to a same, previously filed patent application. However, the public policy led to the same conclusion — an inventor cannot extend her patent monopoly beyond the statutory period by using a second patent to cover the same invention.
The outcome in Gilead Sciences is based on the public policy that once a first patent expires, the public should be able to fully practice the invention. Thus, a second, and patentably-indistinct patent cannot extend the patent monopoly for the same invention beyond the life of the first patent.This outcome also prevents gamesmanship by patent practitioners when prosecuting a patent before the U.S. Patent & Trademark Office (USPTO) such that there is no incentive to delay issuance of a patent so as to extend the life of a patent.
In 1952, the U.S. Congress introduced the terminal disclaimer in 35 U.S.C. 253 so that a patentee could disclaim part of the patent life of a second patent so that the second-to-expire patent would expire at the expiration of the first-expiring patent. Thus, a second patent would not be void, but would be viable until a definite expiration date.
Former Chief Judge Rader dissented from the opinion. Judge Rader reasoned that such an expansion of the doctrine was unnecessary partly because courts should not re-write the intent of legislation. Judge Rader warned that this decision could have unintended consequences under the new America Invents Act (AIA), which changed the system to a first-to-file system.
While this decision did not involve patents in the same patent family, this decision could be extended to patents in the same family. Patents in the same family generally are entitled to a same or common priority date. Patents in the same family are generally subject to terminal disclaimers, patent term adjustments (PTAs) and patent term extensions (PTEs). Such an extension to any fact pattern where a first-to-issue and last-to-expire patent is not patentably distinct from a different second-to-issue and first-to-expire patent could essentially wipe out the PTA of the patent that was first issued but later expired. Accordingly, this decision is not great news for patent owners.