“The NYIPLA’s amicus brief asserts that half of all patents issued by the agency receive PTA…. Under the Federal Circuit’s ruling, these patents now face the risk of invalidation through no fault of the patentee because of PTA that the USPTO is required by statute to add to the patent term.”
On May 28, the New York Intellectual Property Law Association (NYIPLA) filed an amicus brief with the U.S. Supreme Court in Cellect v. Vidal, urging Court to take up Cellect’s appeal from the invalidation of its patent claims to image sensors for obviousness-type double patenting (ODP). The NYIPLA’s brief contends that the Federal Circuit’s decision increases the risk of invalidity for a significant portion of U.S. patents despite the fact that the traditional basis for ODP doctrine no longer exists under U.S. patent law.
Last August, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision affirming decisions by the U.S. Patent and Trademark Office (USPTO) to invalidate patent claims owned by Cellect. In so ruling, the Federal Circuit held that ODP analysis must be based on the expiration date of a patent after any patent term adjustment (PTA) for administrative delay is added under 35 U.S.C. § 154(b).
Patent Owners Face New Invalidity Risks Created by Agency Delays
Cellect’s petition for rehearing en banc at the Federal Circuit was denied last December, leading Cellect to file a petition for writ of certiorari at the Supreme Court on May 20. Cellect’s petition asks whether a patent issued in good faith can be invalidated by statutory PTA triggering a judicially-created invalidation doctrine. Cellect noted that it had never been accused of patent gamesmanship in obtaining its continuation patents, often cited as a reason behind the creation of non-statutory ODP doctrine, and argued that the Federal Circuit’s decision departs from traditional equitable considerations that evaluate whether the added period of patent protection is unjustified.
Citing data published by the USPTO, the NYIPLA’s amicus brief asserts that half of all patents issued by the agency receive PTA, averaging 299 days of time added to patent exclusivity for agency delays. Under the Federal Circuit’s ruling, these patents now face the risk of invalidation through no fault of the patentee because of PTA that the USPTO is required by statute to add to the patent term, adds the brief. NYIPLA also cites a significant increase in the number of terminal disclaimers filed by patent applicants in 2023 as evidence of the impact of the Federal Circuit’s In re Cellect ruling.
The NYIPLA’s amicus brief also questions whether ODP doctrine should still apply following changes in the 1990s to the calculation of patent terms. Congressional passage of the Uruguay Round Agreements Act (URAA) changed patent terms from 17 years after issuance to 20 years from the date of patent application filing. Under this current state of the law, later-issuing patents expire on the same date as patents within the same family that issued earlier from the USPTO. Any additional patent term length added for agency delay does not give rise to the type of improper gamesmanship that led federal courts to develop ODP doctrine as far back as the mid-1800s, NYIPLA argued.
ODP Doctrine Has Prevented Joint Research Initiatives into Medical Treatment
Despite these changes to U.S. patent law, the NYIPLA contends that the Federal Circuit has used enactment of the URAA as a reason to expand ODP analysis. In AbbVie v. The Matilda and Terence Kennedy Institute of Rheumatology Trust (2014), the Federal Circuit found that ODP doctrine must be maintained to address situations where separate patent applications are filed to cover overlapping subject matter having different priority dates. Expansions to ODP doctrine in the URAA context from 2014’s Gilead Sciences v. Natco Pharma led to a dissent from then-Federal Circuit Chief Judge Randall Rader, who pointed out that the URAA’s changes to patent term calculation meant that successive continuation patents generally do not result in additional patent term length.
In In re Cellect, the Federal Circuit held that patent owners must rely on terminal disclaimers to ensure that later-issued patents with PTA are not invalidated under ODP doctrine. According to NYIPLA, this puts patent owners in the unpalatable position of having to choose between forgoing any continuation patents on patent applications that the USPTO is processing slowly or jeopardizing the validity of patent rights. Counsel for NYIPLA noted that it was aware of several situations in which the potential of invalidity under ODP doctrine led tech developers to forgo filing for patent rights, in one case preventing a joint research project in a medical treatment because its foundational tools were separately patented by either developer.
As Cellect noted in its petition, it had no occasion to consider filing terminal disclaimers as no ODP issues were identified by the original patent examiner. NYIPLA’s brief argues that the Federal Circuit’s “solution” in In re Cellect is burdensome on small businesses and independent inventors who are now challenged to identify patent claims that might run afoul of ODP analysis, forgoing a significant period of patent term provided by statute.
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