- Whitney Remily
The Federal Circuit in In re Cellect, invalidated several patents based on obviousness-type double-patenting (OTDP), where patents in the same family had different expiration dates due to Patent Term Adjustment (PTA) under 35 USC § 154.
The Federal Circuit had previously held that when a patent has received Patent Term Extension (PTE) under 35 USC § 156, the expiration date used for the OTDP analysis is the patent’s expiration date before the PTE has been added. Now, in Cellect, the Federal Circuit determined that, if the patent’s extended term is due to PTA, the expiration date after the PTA has been added should be used.
Based on the Cellect decision, patents can be found invalid under OTDP in the absence of a timely filed terminal disclaimer (TD), even where the Examiner during prosecution had not issued an OTDP rejection or required a TD to get the patent application allowed. This decision may lead Applicants to reconsider patent strategies regarding continuation patents, especially after a parent patent has been awarded PTA.