Claim Overlap Can be a Landmine for the Uninformed

Earlier this week the Federal Circuit decided In re Cellect, LLC, affirming the PTAB’s cancellation of claims for obviousness-type double patenting (ODP) over reference claims from earlier expiring patents in the same family in which differences in expiration dates were due solely to patent term adjustment (PTA).

For those in the SEP and Bio/pharma spaces, this is a call to action.

First, critically, the Federal Circuit held (here) that:

  1. A patent with a later expiration date than its family member due to PTA can have its claims invalidated for ODP by the earlier expiring family member; and
  2. Such claims are invalid for their entire term, and not just during the PTA period.

The holding reinforces the importance of building patent portfolios with care and consideration to avoid creation of double patenting landmines that compromise the full statutory term (including PTA) and/or validity of valuable patents relied upon to provide commercial exclusivity. Of course, SEP portfolios are almost always replete with overlap and conflicting claims. The same holds true for portfolios built around valuable drugs.

With respect to drug patents, the danger is heightened where PTE has been applied, during which period reference patents in the same family typically will have expired. Such claims may become incurably invalid if action to mitigate is not timely taken.

What should portfolio managers be doing going forward?

Practitioners should be auditing existing portfolios for ODP issues and implement strategies to address them. Prompt filing of a terminal disclaimer to immunize a patent over reference patent claims before the reference patent expires may be necessary.

Additional steps to consider going forward:

  • Evaluate whether pursuit of additional patents in a family are helpful or harmful to exclusivity
    • Implement claiming strategies that minimize ODP risk and need for terminal disclaimers
    • Note ODP invalidity is assessed on claim by claim basis, but terminal disclaimers impact entire patents
  • Avoid issuing pending claims that may cause ODP problems for existing patents
    • Consider reissue of existing patent to get meaningful claims in a single patent
  • Strategically avail of Safe Harbor under 35 USC 121 whenever possible and avoid breaking consonance
  • Conduct ODP analysis when evaluating third party patent portfolios

I expect that a legislative fix will be proposed in the months ahead. Whether such a fix gets traction is far from clear given the current war on drug prices and the view of some in Congress that “patent thickets” are a cause.

In the meantime, clean-up on aisle 7!