Latent OTDP Issues & Litigation

The Federal Circuit’s decision in In re Cellect clarified that patenting obvious variants of the same invention across multiple patents—Obvious-Type Double Patenting (OTDP)—can result in the elimination/reduction of Patent Term Adjustment (PTA). OTDP was fatal to the challenged Cellect patents given the expiration of the reference patent. This was because a terminal disclaimer to remedy OTDP is not possible after expiration. Earlier this year I explained ways to proactively insulate a patent portfolio from potential Cellect vulnerabilities.

For patent owners facing newly invigorated OTDP attacks in litigation, and where a terminal disclaimer can still be filed, the potential loss of significant PTA creates a strategic quandary.

A terminal disclaimer cannot be withdrawn once filed. So, if a patent owner simply files a terminal disclaimer to moot the OTDP challenge, years of additional patent term (PTA) may be unnecessarily surrendered where the patent owner might have won. But, if the patent owner loses on OTDP without a terminal disclaimer on file, the patent is invalidated.

Recently a patent owner attempted to resolve this quandary with a contingent terminal disclaimer.

You can find the filing (here). I have stripped out the identifying information to focus on the contingent language.

The contingent terminal disclaimer attempts to do the following for a patent that is currently subject to and OTDP challenge in litigation:

  1. If the court invalidates the challenged patent on OTDP over an earlier expiring child (reference patent), then it disclaims the term beyond the child, and
  2. If the court declares such a “contingent terminal disclaimer” impermissible, then the contingent terminal disclaimer is automatically converted “nunc pro tunc” (retroactively) to be a non-contingent terminal disclaimer, but
  3. In no way is the patent owner disclaiming its 1,315 days of PTE (not to be confused with PTA).

The first question is whether the USPTO will accept a contingent terminal disclaimer filed under 37 C.F.R. § 1.321. It will not.

First rule 321 provides:

The disclaimer, to be recorded in the Patent and Trademark Office, must:

. . .

(2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation;

(emphasis added)

A contingent disclaimer does not identify anything definitively “being disclaimed.” And as noted in the second sentence above, a potential non-disclaimer is not a disclaimer. To remove any doubt that this interpretation of the regulation is correct, MPEP 1490 VI. A. states quite succinctly:

It is further noted that the statute does not provide for conditional disclaimers (whether they are terminal disclaimers or statutory disclaimers). Accordingly, a proposed disclaimer that is made contingent on the allowance of certain claims or the granting of a petition, is improper and cannot be accepted.

(emphasis added)

So, a contingent terminal disclaimer will be rejected by the agency.

Still, the memorialization of this intent with the agency (even though rejected) might be leveraged by patent owner to justify some form of equitable relief from the Court. Perhaps patent owner could seek a renewed terminal disclaimer filing a certain number of days prior to final entry of an adverse ruling on OTDP. I can only assume that this is the real motivation behind the filing given the clear guidance of the agency.