USPTO Has a Chance to Correct Double-Patenting Doctrine: Law360 Op-Ed and Amicus Brief

Orrick partners Irena Royzman and Clem Roberts and associate Dana Sublett published an article in Law360 explaining the importance of a case concerning obviousness-type double patenting pending before an Appeals Review Panel at the United States Patent and Trademark Office. The Orrick team also submitted an amicus brief to the panel on behalf of a cross-sectional group of industry leaders, including telecom and tech companies Canon, Nokia, Nagra Kudelski Group, RingCentral, and Sonos, as well as pharmaceutical companies Lundbeck and Sutro Biopharma.

The panel is set to tackle critical issues on the scope of the obviousness-type double patenting doctrine, and both the article and the amicus brief urge the Panel to hold that that later-filed, later-expiring patents cannot serve as proper obviousness-type double patenting references to invalidate earlier-filed, earlier-expiring patents and to put the Patent Office’s practice of rejecting earlier-expiring patents based on later-expiring ones to an end.

Key Takeaways:

1. The case centers on whether the USPTO can use a newer patent to invalidate an older one. Obviousness-type double patenting (“OTDP”) is a judicially created doctrine designed to prevent a patentee from obtaining a second, later-expiring patent that effectively extends the life of an earlier patent covering the same or an obvious variant of the same invention. In Ex parte Baurin, the Examiner rejected patent claims using a patent with a later patent term filing date and a later expiration date, essentially flipping the doctrine on its head. The Board reversed, and the Appeals Review Panel was convened sua sponte to review.
2. OTDP’s purpose of preventing unjustified patent term extensions must control the reference-patent inquiry. Building on the Federal Circuit’s Allergan decision, the article and the amicus brief argue that the doctrine’s bedrock purpose must guide every determination of whether a patent qualifies as a proper OTDP reference. This inquiry requires examiners to compare all relevant information, including the actual filing date, patent term filing date, and expiration dates rather than relying on actual filing date alone.
3. A backwards-looking OTDP rule would create unprecedented unpredictability. Under the Examiner’s approach, filing new patent applications could retroactively threaten the validity of existing patents, and where patents share a common inventor but not common ownership, the typical remedy for curing OTDP (a terminal disclaimer) may not be available.
4. The Examiner’s rule would chill follow-on innovation and collaborative research. If patenting improvements could retroactively invalidate earlier patents, innovators face a difficult choice between continuing to develop new inventions and protecting their existing portfolios, with compounding risks in collaborative and transactional settings involving joint inventorship or patent licensing.
5. Anti-harassment policy concerns cannot independently justify OTDP. No court has ever held a risk of harassment due to litigation by separate patent owners to be a stand-alone basis for an OTDP rejection, and this speculative concern, recognized only in case dicta, does not outweigh the concrete harms the Examiner’s position would create.

Read the full Law360 article here

Read the amicus brief here