In Sun Pharm. Indus.
v. Eli Lilly & Co., 625 F.3d 719 (Fed. Cir. 2010) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law],
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
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
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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