Obvious-Type Double Patenting and PTEs: Defeating ODP Rejections and Avoiding Terminal Disclaimers

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Tuesday, June 16, 2020

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Course Materials

This CLE course will guide IP counsel for understanding double patenting. The panel will analyze recent court treatment, offer best practices to defeat double patenting rejections and avoid terminal disclaimers, and provide specific language to consider if a terminal disclaimer must be filed.


Obviousness-type double patenting (ODP) is nonstatutory and is intended to prevent an inventor from improperly extending a patent's life by having two patents on the same invention. ODP may arise between pending applications, between a patent and one or more pending applications, and between multiple patents, even if not owned by the same party.

In December 2018, the Federal Circuit brought some clarity to ODP in the context of pre-Uruguay Round Agreements Act (URAA) and URAA patents and applications. In Novartis AG v. Ezra Ventures LLC, the court held that ODP did not invalidate the otherwise valid patent term extension (PTE) granted under 35 U.S.C. Section 156.

In Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical Inc., the court clarified in Gilead Sciences Inc. v. Natco Pharma Ltd.(Fed. Cir. 2014) (that a later-issued but earlier-expiring patent could invalidate an earlier-issuing but later-expiring patent for ODP) only applies to post-URAA patents.

In Breckenridge and Ezra, involving a pre-URAA patent and a post-URAA patent, the Federal Circuit cabined Gilead to circumstances where both the patent and the asserted reference patent are URAA. Importantly, the Federal Circuit definitively stated that ODP could not invalidate a validly obtained PTE.

Instead of a terminal disclaimer, arguments of separate patentability are an option. Arguments for separate patentability may be supported by carefully presented real world objective evidence of patentability, such as commercial success, long-felt need, and failure of others.

Listen as our authoritative panel of patent attorneys examines ODP, including the impact of Breckenridge and Ezra and other recent decisions. The panel will offer best practices to defeat ODP rejections and avoid terminal disclaimers.



  1. Recent court treatment
  2. Implications of the recent decisions on ODP practice
  3. Best practices
    1. Defeating ODP rejections
    2. Avoiding terminal disclaimers


The panel will review these and other key issues:

  • What is the scope of double patenting? How do the two recent Federal Circuit decisions impact the scope?
  • What are the steps to defeat double patenting rejections?
  • What are best practices to avoid terminal disclaimers?
  • How can practitioners craft terminal disclaimers with an eye towards patent litigation?


Burgy, Adriana
Adriana L. Burgy

Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  Read More

Irving, Thomas
Thomas L. Irving

Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

MacAlpine, Jill
Jill K. MacAlpine, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling,...  |  Read More

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