Chapter §12.03 Policy Bases

• Jurisdiction: United States

§12.03 Policy Bases

[A] Prevent Improper Extension of Patentee's Right to Exclude Others

The primary policy furthered by the double patenting prohibition is to prevent a patentee, through obtaining a second patent on the same claimed invention or an obvious variant of the same claimed invention she has already patented, from improperly extending the statutorily set patent term of the first patent (sometimes referred to as "extending her monopoly").²⁰ In other words, the goal is to prevent the patentee from obtaining a second patent that will effectively extend the duration of the right to exclude others from practice of a given claimed invention (or obvious variant thereof) that was conveyed previously by her first patent.²¹ As expressed by Judge Giles Rich,

[t]he public should . . . be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications or variants thereof which would have been obvious to those of ordinary skill in the art at the time the invention was made, taking into account the skill in the art and prior art other than the invention claimed in the issued patent"). ²²

[B] Prevent Potential Harassment by Multiple Assignees

A second policy furthered by the prohibition on double patenting is to prevent harassment of competitors by multiple patent owners.²³ The concern is that when multiple patents issue to a given inventor or assignee on patentably indistinct versions of the same claimed invention, those patents may eventually be assigned to different entities. In other words, the patents would no longer be commonly owned. A competitor could face multiple lawsuits for infringement, brought by these various assignees, each of whom would own a patent claiming a merely obvious variant of what was claimed in the other patents.

The policy of preventing harassment by multiple patent owners has taken on much greater importance following the 1994 enactment of the Uruguay Round Amendments Act (URAA). Many double patenting situations stem from the issuance of multiple patents to the same entity based on a chain of continuing applications.²⁴ Under the URAA-implemented provision for computing the 20-year patent term, all patents that issue from the chain of related continuing applications will expire on the same date—20 years after the filing date of the earliest-filed application in the chain.²⁵ There is no longer a concern about effectively extending the term of a first patent by obtaining a second patent on an obvious variant when both patents will expire on the same date. Rather, the concern becomes the possibility that the two patents will be assigned to different entities, setting the stage for potential harassment by multiple assignees.²⁶

The concern for potential harassment by multiple assignees drove the Federal Circuit's 2013 decision in In re Hubbell.²⁷ There a divided panel of the Federal Circuit (in an opinion authored by Judge O'Malley and joined by Judge Wallach) affirmed a USPTO obviousness-type double patenting rejection of an application owned by the California Institute of Technology (CalTech) in view of an issued patent owned by a completely separate entity—the Eidgenossiche Technische Hochschule Zurich (ETHZ) and Universitat Zurich. Importantly, the rejected CalTech application and ETHZ reference patent shared two common inventors but lacked identical inventorship (each had two other, different inventors). The ETHZ reference patent was not prior art because its priority date was later than that of the CalTech application,²⁸ and the ETHZ patent claimed a species of a genus claimed in the CalTech application.²⁹ The parties did not dispute that if the double patenting rejection was permissible as a matter of law, the species claim recited in the ETHZ reference patent would "anticipate" the genus claim of the CalTech application.³⁰

In holding that the double patenting rejection was properly entered, the Circuit majority blessed the USPTO's position that obviousness-type double patenting does not require either common ownership or the identical inventive entity between a rejected application and a reference patent; some overlap in inventorship is enough. The Hubbell majority specifically cited in support of its ruling the USPTO's Manual of Patent Examining Procedure (MPEP) §804(I)(A), which provided that "[d]ouble patenting may exist between an issued patent and an application filed by the same inventive entity, or by a different inventive entity having a common inventor, and/or by a common assignee/owner."³¹ Notably, in a 2009 decision, In re Fallaux,³² the Circuit had specifically declined to adopt the PTO's position that inventor overlap, without common ownership or identical inventive entity, was enough.³³ The 2013 Hubbell decision represents the court's endorsement (or at least endorsement by two Federal Circuit judges) of the PTO view that the court had declined to adopt in 2009.³⁴

Two of the four inventors named on the rejected CalTech '509 application were CalTech chemical engineering professor Jeffrey Hubbell and PhD student Jason Schense; the two remaining CalTech inventors were Zisch and...