Before June 8, 1995, US patents used to have a term of 17 years from issue. After that date, the patent term was changed to 20 years from the earliest priority date. The reason for the change was to stop the practice of submarine patents, which was a strategy used during some patent applicants during the 17-year term provisions to keep patent families alive through the filing of subsequent continuation applications. Because the patent term was calculated from issue, a patent family could be extended for long periods of time through the issuance of continuation patents, each of which had their own 17-year term. To try to curtail this practice, the Court of Customs and Patent Appeals (CCPA), the predecessor court to the Court of Appeals for the Federal Circuit (CAFC), which is the court that currently decides all patent cases, issued a series of cases in the 1960s and 1970s that led to the judge-made doctrine of obviousness-type double-patenting (ODP). With the changing of the patent term from 17 years from issue to 20 years from filing, the problem of submarine patents would logically disappear since all patents would have a 20-year term regardless of when they issue.
Despite the change from the 17-year from issue term to the 20-year from filing term, the USPTO did not remove the ODP requirements from patent prosecution and thus, patent applicants must continue to have to deal with their own patents being cited against each other. Because cases that are subject to ODP rejections are held to be obvious variants of each other, the two patents are tied to each other such that they can never be separated by way of different ownerships or licenses. If two patents that are subject to ODP rejections are ever separated by way of two different assignments or licenses, then those two patents are rendered unenforceable; a terrible outcome for two patents that came from a single patent application filing. This latter impact of a terminal disclaimer filing is particularly jarring in view of the fact that a double-patenting rejection is issued only to prevent the unjust extension of the 20-year patent grant. Where two patents stem from the same parent or were both independently filed on the same day, those patents will have the same filing date and thus, all the double-patenting rejection and terminal disclaimer serve to do is to prevent the patentee from being able to freely assign and/or license the two patents to different entities.
Recently, the USPTO attempted to justify their continuing reliance on double-patenting rejections by invoking the patent term adjustment (PTA) regulations and how PTA may allow one patent that is subject to a double-patenting rejection and terminal disclaimer to extend beyond the term of the other patent. On this issue, it should be noted that PTA was implemented to compensate patentees for unreasonable USPTO delay. In this regard, why should a patentee lose their PTA simply because the USPTO wants to hang onto an anachronistic judge-made doctrine? As it currently stands, all patents in a family will reach back to the earliest filed priority document for their 20-year term. Where the patent subject to a double-patenting rejection is a continuation application, the two patents share the same filing date and thus, the same initial term and consequently, the double-patenting rejection and terminal disclaimer has no effect other than to remove any PTA that is rightly granted to one of the two patents. The USPTO should not take away rightly earned PTA, which is a result of USPTO delay and not applicant delay, simply because a patent application is a continuation application. In such a situation, the USPTO should abide by their own regulations to rightly extend the patent term of the delayed patent pursuant to the PTO rules and regulation. To deprive a patentee of PTA simply because the USPTO is of the opinion that two patents are obvious variants of each other pursuant to a judicially created doctrine that was implemented when different regulations were in place is unfair and unjust.
Finally, it should be noted that the USPTO has a safe harbor provision in place where they cannot issue a double-patenting rejection on divisional applications where the latter are filed in response to a restriction requirement. 35 U.S.C. § 121. The issuance of double-patenting rejections is applicable only to continuation applications, continuation-in-part applications, and stand-alone applications that the USPTO finds to be obvious variants of each other. In addition to the foregoing, it must be noted that the USPTO has taken the position that the safe harbor provisions of 35 U.S.C. § 121 do not apply where a parent application is subject to a restriction requirement and a divisional application subject to the restriction requirement is filed from a continuation application. This later scenario is unusual, but when it happens, a patentee should bear in mind that the safe harbor provision of 35 U.S.C. § 121 will no longer apply to the divisional application.
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