How 'In re Cellect' and a Proposed Rule Could Affect Double Patenting
"'In re Cellect' and the USPTO's proposed rule have the potential to fundamentally affect patent practice, particularly in the realm of terminal disclaimers filed to overcome ODP rejections," write DLA Piper's Jennifer Nall and Henry Fildes.
August 20, 2024 at 10:00 AM
9 minute read
Patent Licensing and TransactionsIntroduction
The doctrine of obvious-type double patenting (ODP), also known as non-statutory double patenting, recently became a very hot topic for patent owners and practitioners after two notable events. ODP is a judicially created doctrine that prevents an improper timewise extension of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent. The USPTO will reject, under the doctrine of ODP, patentably indistinct claims in certain circumstances. A patent applicant may overcome ODP by filing a terminal disclaimer, which disclaims any patent term longer than the term of an unexpired first patent and requires the ownership of both patents to be co-extensive. A terminal disclaimer ensures that the term of the patent with the terminal disclaimer will not extend beyond the term of the patent forming the basis of the non-statutory double patenting.
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