“The name of a man is like his shadow. It is not his substance and not of his soul, but it lives with him and by him. Its presence is not vital, nor its absence fatal.”
Today, I say goodbye to 2015. It was a good day as far as weather. The clouds disappeared briefly this morning to reveal a bright blue sky after several consecutive days of our typically nebulous and perpetually crepuscular skies here in Coeur D’Alene, Idaho. I took a few photos on my way to work, including the following one, to remind me of what the sun and sky look like. Trust me, there was some blue sky overhead!
This year, there have been boatloads of changes in the law. Obviously, I don’t review or summarize them here, but I do keep up with them. I remind my readers that the law is a living, ever-evolving thing, especially as to patents, trademarks and copyrights. Recent examples abound. The extent of discovery under the Federal Rules of Civil Procedure (FRCP) was cut down starting December 1st. This has impact across all areas of intellectual property bu probably not as to the already limited discovery in cases before the U.S. Patent Trial and Appeal Board (PTAB). Several important patent decisions issued like Commil USA, LLC v. Cisco Systems, Inc. Recently, the Federal Circuit broadened the scope of registrable trademarks in The Slants opinion to include marks that appear to be disparaging. You can skim through some of the legal changes in my Twitter Feed. I will continue to keep sharing interesting intellectual property stories there. See you in 2016!
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.
Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) became available on 16 September 2012. The IPR is a post-grant review procedure to challenge the patentability of issued claims of a patent based on prior art patents and publications. An IPR must be requested within one year of the issuance of the patent. A patent owner — often the inventors — can submit a response if a patent is challenged. The response is known as the Patent Owner Preliminary Response (POPR).
Under the rules, the patent owner cannot “present new testimony evidence beyond that already of record.” Accordingly, in order to make a strong case to defeat institution of the IPR, the patent owner should, in the POPR, rely on declarations from experts and inventors setting forth 35 U.S.C. §§ 103 and 112 positions. The declarations need to be “of record.” In order to get them in the record, patent attorneys need to plan ahead and submit affidavits and declarations during prosecution — long before an IPR is requested. I believe that this is the current best practice for patent prosecution, especially if an IPR is expected.
Two cases illustrating the use of declarations are Anova Food L.L.C. v. Leo Sandau and William R. Kowalski, IPR2013-00114 and Omron Oilfield & Marine Inc. v. MD/TOTCO, A Division of Varco L.P., IPR2013-00265.