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Obviousness-Type Double Patenting, PTA, and PTEs: Defeating ODP Rejections, Avoiding Terminal Disclaimers

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

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Conducted on Thursday, April 24, 2025

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This CLE course will guide IP counsel in understanding double patenting. The panel will discuss 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.

Description

Obviousness-type double patenting (ODP) is not statutory and is intended to prevent an inventor from having two patents on indistinct invention and to prevent those patents from being owned by different entities. ODP may arise between pending applications, between a patent and one or more pending applications, and between multiple patents.

The Federal Circuit affirmed the U.S. Patent Office's findings that claims in four patents were unpatentable because they were not patentably distinct from claims in other patents in the same family. [In re Cellect (Fed. Cir. Aug. 28, 2023).] The court noted it was addressing for the first time how a statutorily authorized extension, patent term adjustment (PTA), interacts with ODP. The case was carefully watched due to the potential implications. Cellect is essentially final, as the Supreme Court denied cert. As a result of the precedential decision, patent applicants and patentees should consider how they can minimize the impact of the court's decision on their current patents and pending applications. In addition, follow on cases add fuel to the ODP fire, such as Allergan, (Fed. Cir., Aug. 13, 2024) (same panel as Cellect but finding no ODP), Acadia, (D. Del., Dec. 13, 2023) (Judge Williams) (disagreeing with Allergan lower court and on appeal now at the Federal Circuit), and Ex Parte Baurin, Appeal 2024-002920, Appl. No. 17/135,529 (PTAB Nov. 6, 2024) (Judge Townsend, trained by Tom at his former firm), brilliantly showing the door to an ODP rejection.

And that’s not all. On March 13, 2025, the Federal Circuit decided Merck v. Aurobindo, holding that the reissue patent in suit was entitled to a 5 year PTE based on the original patent’s issue date.

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

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Outline

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

Benefits

The panel will review these and other key issues:

  • What is the scope of double patenting? How do 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 toward patent litigation?
  • What are specific best steps to avoid the untoward result in Cellect?
  • Calculating PTE for a reissue patent.

Faculty

Irving, Thomas
Thomas L. Irving
Partner
The Marbury Law Group

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Masters, James
Dr. James T. Masters, Ph.D.
Attorney
Finnegan Henderson Farabow Garrett & Dunner

Dr. Masters focuses on patent prosecution, opinions and counseling, patent mapping, and patent litigation in the...  |  Read More

O’Brien, Michelle
Michelle E. O'Brien
Partner, Head of Life Sciences
The Marbury Law Group

Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in...  |  Read More

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