PATENTBUSTERS® Tip: OTDP due to lack of a Terminal Disclaimer

Howard Skaist

This is the first article of a three-part series sharing some of Berkeley Law & Technology Group’s PATENTBUSTERS® tips. These tips suggest tools companies can use to efficiently devalue or invalidate an asserted patent, potentially saving time and money, or even avoiding a trial or leading to settlement. Tips number two and three will follow in future issues of LOT Quarterly.

In situations to neutralize an adverse patent (e.g., otherwise devalue it), significant legal analysis and / or technical analysis may take place. In an attempt to establish invalidity, for example, a significant amount of time and money may be expended on performing searches of the state of the technical art. Likewise, significant time and money may be expended on analysis of search results to then establish invalidity via a legal analysis that supports (e.g., demonstrates) anticipation and / or obviousness.

All of this eats away at valuable time and costs money.

In contrast, our PATENTBUSTERS® tips refer to various approaches companies can use to neutralize an adverse patent, for example, that may involve less time and / or expense. In other words, our tips target your potential “low-hanging fruit”. Such approaches are not limited to patents asserted by non-practicing entities (NPEs), but they may be particularly effective in such situations. Of course, PATENTBUSTERS® tips are also not limited only to invalidity issues, since an adverse patent may be neutralized other ways as well.

Which brings us to our first PATENTBUSTERS® tip – OTDP due to lack of a TD.

It is not uncommon for an asserted patent to issue from a continuation patent application of an original patent application filing, and it may be that the original patent application has also issued as a patent. Likewise, in such situations, a terminal disclaimer (TD) may not have been filed during prosecution of the continuation patent application. If so, it may be that the asserted patent is invalid based on obviousness-type double patenting (OTDP). See AbbVie v. Kennedy, 764 F.3d 1366 (Fed. Cir. 2014). If the Examiner raised OTDP during prosecution, then it is quite likely that a TD was filed; however, otherwise it would not be surprising if the filing of a TD had not occurred.

A further complication may be whether or not the claims should be evaluated using the test for one-way or for two-way type double patenting. See Gilead Sciences v. Natco Pharma, 753 F.3d 1208 (Fed. Cir. 2011). There is a greater chance of a problem if two-way double patenting applies, since it would be more difficult to be able to assert that there is no OTDP in that case. Thus, again, failure of a TD may result in invalidity.

Likewise, even if a restriction requirement had issued during prosecution of the original patent application filing, OTDP could still result in invalidity of the follow-on patent application filing. For one thing, if the follow-on patent application filing was filed as a continuation rather than a divisional, it will not be accorded the benefit of the safe harbor provision, 35 USC § 121. See G.D. Searle v. Lupin Pharm, 790 F.3d 1349 (Fed. Cir. 2015). Likewise, if filed as a divisional patent application, rather than as continuation patent application, claim amendments may result in the issued claims of the divisional patent application not being consonant with the independent and distinct invention that was the basis for the restriction requirement that had been issued. See Geneva Pharms v. GlaxoSmithKline, 349 F.3d 1373 (Fed. Cir. 2003). Thus, again, if so, a TD would have been needed.

Finally, a recent case suggests a risk of yet an additional pitfall. See Ex Parte Sauerberg, Appeal 2015-007064 (PTAB Jan. 10 2017). That case applied a “strict test” under 35 USC § 121 relying on the language of the statute to conclude that the divisional patent application must be filed before the original patent application that received the restriction requirement is issued. Thus, for example, as occurred in that case, if intervening continuation patent applications are filed, then the safe harbor under 35 USC § 121 may not apply, in which case, again, a TD would be needed, but one may not have been filed.

In summary, in situations in which an asserted patent has a claim of domestic priority to a previously filed, but previously or later issued patent, it would be prudent to check for whether a TD has been filed for the asserted patent. If one has not been filed, it may be that the asserted patent is invalid for OTDP.

About the Author

Howard Skaist is a partner with and the founder of Berkeley Law & Technology Group, LLP (BLTG). BLTG was started in 2003 by Mr. Skaist after he had been employed as the Director of Patents for Intel Corp. BLTG has a total of twelve patent lawyers and handles all aspects of intellectual property law practice, including patent law. Mr. Skaist has also been an adjunct professor at Boalt Hall Law School in Berkeley, CA, at Willamette School of Law in Salem, OR, at Lewis and Clark Law School in Portland, OR, and at Albany Law School.