The U.S. District Court for the Western District of Michigan issued an obviousness-type double patenting (ODP)-related decision in Magna Electronics v. TRW.
The term of a patent is usually based on the filing date of a patent application- usually a patent is good for 20 years after it is filed. However, undue delays by the U.S. Patent and Trademark Office may result in accrual of patent term adjustment (PTA), which extends the normal life of a patent. PTA can be reduced by any undue delay on an applicant’s part (for example, taking extensions of time when responding to an Office Action).
An invention in a patent application must be new and non-obvious for it to be granted as a patent. Obviousness-type double patenting (ODP)- is a Court created doctrine intended to prevent the unjustified or improper timewise extension of patent rights. Claims are subject to an ODP rejection when claimed subject matter is not patentably distinct from, e.g., subject matter claimed in a commonly owned application or patent when the issuance of a second patent would provide unjustified extension of patent term. To date, ODP rejections have typically been seen in later-filed applications, and can be overcome by terminally disclaiming the terminal portion of a patent that would extend beyond the expiration date of an earlier-filed application.
In this Magna Electronics v. TRW, however, citing Gilead, the Court issued an opinion and order granting partial summary judgment, invalidating an asserted patent (US 7,339,149) and wiping away its Patent Term Adjustment (PTA), saying the patent was invalid under the doctrine of obviousness-type double patenting in view of US 7,402,786. Both patents claimed a common filing date, but the ‘786 patent was later filed and later issued, as compared to the ‘149 patent:
Although citing to Gilead, the opinion significantly expands the scope of the ODP doctrine, since an earlier-filed patent’s PTA (rightfully earned from undue USPTO delay), was eviscerated based on a later-filed application in the same family. The decision may well be appealed and possibly reversed, but in the meantime, it is representative of a worst-case-scenario come to pass. If upheld, it will force patentees to seriously weigh the costs/benefits of filing (and put significant consideration into desired claim scope of) a continuation in a family that already has a PTA-carrying member.
By Erica Hines.