Intellectual property partner Betsy Haanes co-authored an article on recent judicial, administrative, and legislative responses to the doctrine of obviousness-type double patenting (ODP). ODP is a judicially-created mechanism that stops patentees from extending their patent term by seeking a second patent with claims that are not distinguishable from the first.
Patent owners should be on guard because courts have increased their use of ODP, Haanes writes with co-author Ryan Chirnomas, a partner at Westerman, Hattori, Daniels, & Adrian. Their article, “Double Trouble: The expanding application of the judicial doctrine of obviousness-type double patenting,” appeared in the June newsletter of the Biotechnology Committee of the American Intellectual Property Law Association (AIPLA).
AIPLA’s Biotechnology Committee is a multi-faceted committee of 750 members, including law firm and in-house attorneys, law professors, and law students. Hannes is the Chair of the Biotech Patent Education Subcommittee
“The core principle of the patent system is that patent rights are a time limited asset,” Haanes and Chirnomas write. “It is this policy reason, as well as the desire to prevent harassment of accused infringers by multiple parties asserting rights of exclusivity to the same invention, that justifies the judicially-created doctrine of obviousness-type double patenting.”
Haanes and Chirnomas wrote that since the implementation of the American Invents Act, the U.S. Patent and Trademark Office has ramped up its application of ODP, “particularly with respect to co-pending applications in the same patent family.” Courts have proved just as enthusiastic.
In one high-profile decision last year, In re Hubbell, the Federal Circuit upheld the application of ODP in a case of an inventor who switched employers but was named as an inventor on separate patents filed by each institution. His second employer received the patent for his technology while the application of his former employer, Caltech, was still pending. Caltech subsequently received an ODP rejection.
“To avoid the situation in Hubbell, there are likely few options,” Haanes and Chirnomas write. “Rather, the best advice may be to confer with inventors before, during and after their employment, so that the assignee is aware of all of their applications.
Employers can also carefully draft employment agreements that contain reasonable time-based non-compete provisions or require employee-inventors to assign to their employer obvious variants of inventions made during employment.
“However, both of these options open up a variety of potential enforceability problems, particularly in academia,” they write.
An accomplished scientist with a Ph.D. in microbiology, Betsy Haanes advises innovator biotechnology and pharmaceutical companies on best practices for the worldwide protection of their intellectual property.