Imagine That IP Law Blog

The Federal Circuit issued a decision in In re Cellect on August 28, 2023 which may have far-reaching consequences during the assertion of one or more patents that are related members in a patent family, and that include claims that may be subject to an argument for invalidity for obviousness-type double patenting (ODP). The Federal Circuit found that when two or more related family member patents in a patent family cover similar enough or overlapping inventions, ODP can be applied to invalidate one of the patents where the related family member patents expire at different times due to patent term adjustment (PTA).

The Federal Circuit stated: "[a] crucial purpose of ODP is to prevent an inventor from securing a second, later-expiring patent for non-distinct claims. This purpose applies equally to situations in which the later patents have received grants of PTA resulting from examination delays."

While there may be further review of this case as well as an appeal to the U.S. Supreme Court, at this point, a careful review should be made prior to asserting any patent from a patent family of related patents in order to determine if an issue may be raised under the Cellect case, and if appropriate, some action taken, such as filing a terminal disclaimer to disclaim any PTA extended term of the later-expiring patent, in order to avoid this issue.

A detailed explanation from Volpe Koenig on this issue will be published shortly.