Double Your Patents, Double Your Trouble? A Departure in Double-Patenting Law

Double Your Patents, Double Your Trouble? A Departure in Double-Patenting Law

In Sun Pharm. Indus. v. Eli Lilly & Co., 625 F.3d 719 (Fed. Cir. 2010) [enhanced version available to subscribers / unenhanced version available from lexisONE Free Case Law], the Federal Circuit departed from long-established law on obviousness-type double patenting. The decision creates risks for patent owners who obtain patents that are related to each other, especially where those patents are continuations-in-part of an earlier application. In this Commentary, Timothy Murphy discusses obviousness-type double patenting and examines Sun Pharmaceuticals. He writes:

     Under U.S. law, the Patent and Trademark Office is supposed to issue only one patent per invention. 35 U.S.C. § 101. Thus, the PTO should reject a claim in a pending patent application where that claim is identical to a claim in a previously issued patent-even when the application and the patent have the same owner and same inventors. Such a rejection is called a "statutory double-patenting" rejection.

     When a later-pending claim is not identical to a claim previously issued to the same applicant but is obvious over that claim, the PTO is supposed to make an "obviousness-type double-patenting" rejection. Because the doctrine of obviousness-type double patenting was developed by the courts and is not based on the patent statute, it is sometimes called "non-statutory double patenting."

     . . . .

     Also, in view of the holding in Sun Pharmaceuticals, patent applicants should be cautious if they discover a new use for a compound after filing a patent application disclosing the compound and an original use for the compound. If a continuation-in-part application is filed adding the new use to the disclosure, the patent applicant should consider refraining from claiming therein the compound and the original use.

     The applicant may be better served by continuing to pursue the compound and the original use in the original application or in a straight continuation application. Otherwise, the applicant may find itself in a situation like Eli Lilly where the new disclosure may be used against it when trying to claim the new use.

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