Balancing Inequities: Overcoming Double Patenting in Today's World


Obviousness-type double patenting ("OTDP") is a rare beast in the realm of patent law – in a regime dominated by statutes and rules, OTDP arises from equity. Like patent misuse, implied license, and the doctrine of equivalents, OTDP was judicially created to right perceived wrongs allowed by those statutes and rules. In the case of OTDP, those wrongs are easy to understand.

One of the underlying wrongs is unjust extension of patent term. If a patentee seeks to obtain a second patent to essentially the same invention as an earlier patent, the second patent should last no longer than the first.

The second and less obvious wrong is subjecting an alleged infringer to multiple lawsuits by different parties on patents arising out of the same inventive activities. Such duplicative lawsuits unfairly penalize potential infringers and complicate the path to market for the patented technology, so patentees seeking multiple patents to essentially the same invention should not be permitted to separate the related patents from one another.

The United States Patent and Trademark Office ("USPTO") rejects applications for OTDP as a way of preempting the granting of multiple indistinct patents. The standard cure for OTDP is to file a terminal disclaimer ("TD") with two key provisions: (1) any term of the later patent that outlasts a prior patent is disclaimed and (2) the affected patents must be commonly owned or enforced. Although the name "terminal disclaimer" suggests only the first of these requirements, the second provision is an inextricable part of a TD.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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