Interestingly, section 9(d)(4) of the Innovation Act would provide that a patent that is subject to § 106 could not be held invalid “on any nonstatutory, double-patenting ground,” while section 9(d)(5) would limit its applicability to situations where “both the first and second patents… are patents or patent applications that are described in section 3(n)(1) of the Leahy-Smith America Invents Act,” e.g., where both the first and second patents are subject to the first-inventor-to-file version of § 102.

How Does § 106 Go Too Far?

Proposed § 106 expressly invokes § 103, the prior art obviousness statute. While the judicially-created doctrine of obviousness-type double patenting invokes some aspects of obviousness jurisprudence, the main purpose of the judicially-created doctrine is “to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent.” By referring to § 103, proposed § 106 may erase the differences between the substantive standards for obviousness and obviousness-type double patenting, and may expressly invoke the frame of reference set forth in § 103. For example, whereas § 103 is judged from the perspective of a person having ordinary skill in the art “before the effective filing date of the claimed invention,” obviousness-type double patenting is not necessarily tethered to the effective filing date, but can be overcome by relying on “subsequent developments in the art” occurring after the effective filing date. See Takeda Pharm. Co. v. Doll, 561 F.3d 1372, 1378 (Fed. Cir. 2009). The Federal Circuit also has noted other differences between § 103 and obviousness-double patenting. See Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1378 n.1 (Fed. Cir. 2003.

Further, to the extent that § 106 would extend obviousness-type double patenting beyond the purpose of preventing “the unjustified or improper timewise extension of the right to exclude granted by a patent,” it could vitiate the protections of § 102(b)(2)(C), such as if obviousness-type double patenting is based on combining the subject matter of the claimed invention of the “first” patent with any number of prior art references, as could be permitted under § 103.

Clause (2)(B) of proposed § 106 appears to go too far by providing for an obviousness-type double patenting rejection where the first and second patents are not linked by common inventorship, ownership or a joint research agreement, if the claimed invention of the first patent was was obtained from the inventor of the second patent, or if the inventor of the second patent had publicly disclosed the claimed subject matter before the effective filing date of the first patent. Under those circumstances, it seems that the first patent should be rejected or invalidated, not cited against the second patent.

Significantly, § 106 might make obviousness-type double patenting a new basis for requesting inter partes review. By statute, inter partes review only can be based on any “ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Because the existing judicially-created doctrine of obviousness-type double patenting does not invoke § 103, obviousness-type double patenting currently cannot be the basis of inter partes review. However, § 106 as proposed in the Goodlatte Innovation Act might change this because the proposed statute would provide that the “first” patent ”shall be considered prior art… for the purpose of determining the nonobviousness of the claimed invention of the second patent under section 103.” That is, by treating the “first” patent as “prior art” and expressly invoking § 103, proposed § 106 could make obviousness-type double patent a new basis for inter partes review.

How Does § 106 Not Go Far Enough?

On the other hand, to the extent that § 106 is intended to codify current obviousness-type double patenting jurisprudence, it may not go far enough. For example, proposed § 106 limits the “first” patent to a patent or application that does not qualify as prior art, while under the judicially-created doctrine, a “first” patent can be cited against a second patent regardless of whether it also qualifies as prior art. Additionally, proposed § 106 limits the “first” patent to a patent or application with the same or earlier effective filing date, while under the judicially-created doctrine a “first” patent can be cited against a second patent regardless of whether it has an earlier effective filing date. At least the latter restriction on the first” patent would prevent a later-filed patent from being cited against an earlier filed patent or application, which sometimes occurs under existing obviousness-type double patenting jurisprudence.

The restrictions on the applicability of proposed § 106 also are interesting. Why should it matter that the “first” patent is subject to the first-inventor-to-file version of § 102? If only the second patent is subject to the first-inventor-to-file version of § 102 could it not be rejected for obviousness-type double patenting, or would the existing judicially-created doctrine apply? If the existing judicially-created doctrine could apply, why do we need § 106?

A Difficult Area of Law Needs More Clarity, Not More Confusion

Obviousness-type double patenting is one of the more difficult aspects of U.S. patent law. The proposed obviousness-type double patenting statute included in the Innovation Act does nothing to clarify the law, but instead would create even more confusion, by raising new issues as to what it means, and generating a second line of obviousness-type double patenting jurisprudence that would be similar but different from the existing judicially-created doctrine. Further, the proposed statute could vitiate the protections of § 102(b)(2)(C) and expand the grounds for inter partes review. In view of all these issues, is 106 even necessary? Does the existing judicially-created doctrine really not apply to first-inventor-to-file patents?