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Category Archives: Obviousness Type Double Patenting

The Danger Of Double Patenting

Posted in Federal Circuit Decisions; Obviousness Type Double Patenting

In St. Jude Medical, Inc. v. Access Closure, Inc., the Federal Circuit found that one of St. Jude’s patents was invalid under the doctrine of obviousness-type double patenting. This case highlights the potential difficulty of maintaining consonance with an original restriction requirement in a multi-generational patent family.  Continue reading this entry

Congressman Goodlatte Proposes To Codify Obviousness-Type Double Patenting

Posted in Obviousness Type Double Patenting; Patent Reform

As I wrote previously, Congressman Goodlatte (R-Va.) released “a discussion draft” of patent reform legislation on May 23, 2013. Although the stated purpose of the draft legislation is to “address the ever increasing problem of abusive patent litigation,” it also includes other significant proposed changes, including provisions that would eliminate Section 145 actions and eliminate Exelixis I-type Patent Term Adjustment (PTA), as I summarized in this article. Here, I look at the provisions that would codify the doctrine of obviousness-type double patenting (OTDP). Continue reading this entry

Federal Circuit Finds Obviousness-Type Double Patenting Without Common Ownership

Posted in Federal Circuit Decisions; Obviousness Type Double Patenting

Obviousness-type double patenting usually arises between commonly-owned patents or patent applications. While the USPTO has interpreted the judicially-created doctrine as pertaining when there is common or overlapping inventorship, without regard to common ownership, the Federal Circuit had not upheld that interpretation of the doctrine until last week, in In re Hubbell.Continue reading this entry

Federal Circuit Clarifies Obviousness-Type Double Patenting Between Products And Methods

Posted in Federal Circuit Decisions; Obviousness Type Double Patenting

In Eli Lilly and Company v. Teva Parenteral Medicines, Inc., the Federal Circuit affirmed the district court’s decision that Eli Lilly’s patent to pemetrexed is not invalid for obviousness-type double patenting. The Federal Circuit’s decision provides important guidance on one of the most complex areas of  U.S. patent jurisprudence, and explains how information in the specification can be used in a double patenting analysis, discusses when obviousness-type double patenting may arise between product and method claims, and notes that unexpected results may be relevant to obviousness-type double patenting.Continue reading this entry