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Celebrex Patent Invalidated for Double Patenting
In Pfizer, Inc. v. Teva Pharms. USA, Inc., 2007-1271 (Mar. 7, 2008) the federal circuit reversed a trial court decision of noninvalidity for obviousness-type double patenting. At issue was the proper interpretation of 35 U.S.C. § 121, specifically, whether it provides a safe harbor from obviousness-type double patenting defenses to patents that issue from continuation-in-part applications that include both restricted subject matter and—as the name suggests—new matter. The court teaches in this opinion that it does not.
Obviousness-type double patenting is a judge made doctrine that prevents a party from obtaining an extension of the right to exclude through claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent. In other words, it is belongs to a set of several doctrines that work to limit the patentee to one period of exclusivity per disclosed invention. Otherwise, patentees might be encouraged to submit overlapping claims in applications filed at different times in an effort to extend exclusivity as long as possible.
In this case, the original patent contained claims directed to compounds, compositions, and methods involving the NSAID Celebrex. The patent office imposed a restriction requirement—used when an application presents patentably distinct inventions that the office would prefer an applicant to prosecute separately. The problem is that sometimes the parallel prosecution of the distinct inventions can present invalidity problems for a patent applicant. Section 121 exists to protect patent applicants against prejudicial affects of this office procedure. But, as the court teaches in this case, it does not apply to continuation-in-part applications—those where the applicant is prosecuting a restricted invention, but includes in the application, new matter.
Posted by at March 10, 2008 6:39 PM in News & Commentary, Recent Cases | Permalink
