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Obviousness-Type Double Patenting, PTA, and PTEs: Defeating ODP Rejections, Avoiding Terminal Disclaimers, Impact of In re Cellect

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

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Conducted on Monday, October 16, 2023

Recorded event now available

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This CLE course will guide IP counsel in understanding double patenting. The panel will analyze the In re Cellect decision and other 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 not statutory and is intended to prevent an inventor from having two patents on indistinct invention. ODP may arise between pending applications, between a patent and one or more pending applications, and between multiple patents.

In August, 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. 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.

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.



  1. In re Cellect and 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 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?


Irving, Thomas
Thomas L. Irving

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
James T. Masters, Ph.D.

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

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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