No PTA for you!

An interesting case today from the Federal Circuit: In re Cellect, LLC. The case concerns patent term adjustment and how this rule works with obviousness-type double patenting.

Simplifying, here is the scenario:

Patent 1: Filed October 6, 1997. No patent term adjustment, so the patent expires as late as October 6, 2017 if all fees are paid.

Patent 2: A continuation of patent 1. This patent gets 726 days of patent term adjustment. Otherwise, as a continuation of Patent 1, Patent 2 likewise would have had a term extending to as long as October 16, 2017.

On reexamination, the Examiner decided that some claims of Patent 2 were invalid for obviousness-type double patenting over claims of Patent 1. The patentee did not file a terminal disclaimer but chose to appeal.

Assuming the double patenting rejection is merited, is Patent 2 invalid, or does the fact that it received patent term adjustment override the double patenting rejection? The Federal Circuit today held that the subject claims of Patent 2 were invalid; the grant of patent term adjustment did not override the obviousness-type double patenting problem with the claims.

Here’s a question that the court did not answer. What if there were a Patent 3:

Patent 3: A continuation of Patent 2. This patent gets no patent term adjustment. It therefore has a term that extends to as long as October 16, 2017.

Let’s say some claims in Patent 3 are subject to obviousness-type double patenting over claims of Patent 1. Would these claims be invalid absent a terminal disclaimer?

From the reasoning of the court today, probably yes. Why? Although the term of Patent 3 cannot extend past the expiration date of Patent 1, the court observed that one purpose of the terminal disclaimer rule is to prevent splitting the ownership of related (patentably indistinct) claims. Without a terminal disclaimer, the patent owner could sell Patent 3 independently to a third party.

In any case, today' result was expected but not with certainty. Of course, the decision is subject to potential en banc or Supreme Court review.