Chapter §12.09 Use of Terminal Disclaimer to Overcome Obviousness-Type Double Patenting
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§12.09 Use of Terminal Disclaimer to Overcome Obviousness-Type Double Patenting
[A] Terminal Disclaimers in the USPTO
For applicants in the USPTO, a same invention-type (statutory) double patenting rejection can be overcome only by (1) amending the rejected claims so that they do not define the same invention as that claimed in the reference patent, (2) canceling the claims,117 or (3) successfully appealing the double patenting rejection on the merits. Filing a terminal disclaimer, as explained below, will not overcome a same invention-type double patenting rejection.118 Regardless of when they expire, the issuance of two patents on the identical invention would violate the statute.119
In marked contrast, a rejection for judicially created obviousness-type double patenting is not necessarily fatal to an applicant's attempt at obtaining a second patent. The courts have recognized that an obvious-type double patenting rejection can be overcome by the filing of a terminal disclaimer.120 Such disclaimers are authorized by 35 U.S.C. §253 and regulated by USPTO rules.121
Consider again the example of an individual who has obtained a first U.S. patent and filed another application in the USPTO for a second patent. Assume that the USPTO rejects the claims of the second application for obviousness-type double patenting over similar claims already issued in the applicant's patent. By submitting a terminal disclaimer in response to the rejection, the applicant would formally agree that if the USPTO were to allow the rejected claims of his second application, the resulting (second) patent would be deemed to expire on the same date as his first patent.122 Because the two patents would expire on the same date, the terminal disclaimer would alleviate the policy concern over extension of monopoly that would otherwise result from granting a second patent on the later-filed application.
The result of being able to overcome obviousness-type double patenting rejections by filing terminal disclaimers is that a single patentee may legitimately obtain two (or more) patents claiming inventions that are merely obvious variants of each other. Although this may seem problematic on its face, it is allowed only if a proper terminal disclaimer is in place. Importantly, all patents subject to the terminal disclaimer will expire on the same date. The result is effectively the same as if all claims were included in a single patent.123
In permitting this outcome, the patent system maintains incentives for the patentee to improve his original invention, but does not allow him to extend the period of time in which he can prevent others from practicing the patented invention and its obvious variations. The Federal Circuit's predecessor court, the CCPA, recognized that "many, if not most, double patenting situations fall into the obviousness-type double patenting category and involve a modification of or improvement upon what an inventor or his assignee has already patented. The desire is to be able to bring such improvement inventions within the protection of the patent system, at the same time giving an incentive for their disclosure."124 To this end, the 1952 Patent Act included a provision authorizing terminal disclaimers, intended (at least in part) to allow applicants to obtain patent protection for their improvements despite the historic judicial dislike of double patenting.125
An effective terminal disclaimer must satisfy certain requirements.126 To overcome an obviousness-type double patenting rejection, it is not enough to merely disclaim excess patent term. The terminal disclaimer must also certify that the two patents involved will remain commonly owned; that is, that the terminal disclaimer will be effective only for so long as the two patents remain owned by the same entity. If this were not the case, the possibility would arise that an accused infringer could be harassed by multiple lawsuits alleging that the accused infringer's product or process infringed multiple patents claiming obvious variants of the same invention, but owned by different plaintiffs.127 Thus, the USPTO rules require, inter alia, that
[a] terminal disclaimer, when filed to obviate judicially created double patenting in a patent application or in a reexamination proceeding . . . must: . . . (3) Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting. 128
In 1982, the CCPA examined and upheld the validity of this regulation's predecessor in In re Van Ornum.129
[B] Terminal Disclaimers in Litigation
Consider next the example of a patentee who owns two U.S. patents on related technology. Assume that Patent 1 issued first and Patent 2 issued two years later, from related co-pending applications (thus, under the URAA-implemented patent term system, both patents are set to expire on the same future date130). While both patents are still in force, the patent owner sues a competitor for infringement of Patent 2. The competitor defends by asserting that Patent 2 is invalid for obviousness-type double patenting over Patent 1. A district court agrees, holding that because the claims of the two patents are not patentably distinct, Patent 2 is invalid for obviousness-type double patenting.
It appears that the patentee in this example has the option of submitting a terminal disclaimer to overcome the invalidation of Patent 2.131 The Federal Circuit has stated (in dicta) that "a patentee may file a disclaimer after issuance of the challenged patent or during litigation, even after a finding that the challenged patent is invalid for obviousness-type double patenting."132 The terminal disclaimer would presumably provide that Patent 2 would expire on the same date as Patent 1, and that the two patents would remain commonly owned.133
There is an important proviso to the notion that a terminal disclaimer can be filed post-issuance to overcome judicial invalidation for obviousness-type double patenting. Such a disclaimer cannot be "retroactive," that is, it must be filed before the expiration of the earlier commonly owned patent (i.e., before the expiration of Patent 1 in the above example).
A patentee unsuccessfully attempted to file a retroactive terminal disclaimer in Boehringer Ingelheim Intern. GmbH v. Barr Labs., Inc.134 The plaintiff's two patents issued within six months of each other from two related pre-URAA applications (i.e., a first divisional and a divisional of the first divisional) and consequently would have expired within six months of each other. The second patent's expiration date was extended for more than four additional years, however, when the patentee successfully obtained patent term extension under 35 U.S.C. §156. After a district court held the second patent invalid over the first patent for obviousness-type double patenting, the patentee filed in the USPTO a terminal disclaimer purporting to disclaim the six months that its second patent initially extended beyond its first patent, but not disclaiming the additional four-plus years of §156 patent term extension. The district court rejected this strategy because by the time the patentee filed its terminal disclaimer, its first patent had already expired.
The Federal Circuit affirmed, observing that
[w]hen the claims of a patent are obvious in light of the claims of an earlier commonly owned patent, the patentee can have no right to exclude others from practicing the invention encompassed by the later patent after the date of the expiration of the earlier patent. But when a patentee does not terminally disclaim the later patent before the expiration of the earlier related patent, the later patent purports to remain in force even after the date on which the patentee no longer has any right to exclude others from practicing the claimed subject matter. By permitting the later patent to remain in force beyond the date of the earlier patent's expiration, the patentee wrongly purports to inform the public that it is precluded from making, using, selling, offering for sale, or importing the claimed invention during a period after the expiration of the earlier patent. 135
The patentee could not "undo [its] unjustified timewise extension by retroactively disclaiming the term of the later patent because it has already enjoyed rights that it seeks to disclaim."136
[C] Terminal Disclaimer Does Not Admit Claims Patentably Indistinct
Because terminal disclaimers are usually filed to obviate obviousness-type double patenting rejections, the Federal Circuit has characterized them as a "strong clue" that the USPTO examiner, and by admission, the patent applicant, considered that the claims of the terminally disclaimed patent (e.g., issuing from a continuation application of a parent patent) lacked patentable distinction over the claims of the parent patent.137
Nevertheless, the Circuit emphasized in its March 2018 decision in SimpleAir, Inc. v. Google LLC.138 that that "strong clue" does not create a presumption or operate as an admission that the terminally disclaimed patent's claims are patentably indistinct or merely obvious variants of the parent patent's claims.139 To determine their patentability, the claims of the terminally disclaimed patent must be analyzed substantively by comparing their scope with those of the parent patent, as well as any other relevant transactional facts.140
Unlike a patent that has been through reexamination (in which claim scope cannot be enlarged141), a continuation patent that issues from a parent patent over which it was terminally disclaimed may properly include broader claims than the parent (so long as the broader claims are adequately supported under §112, first paragraph). In this regard, the terminally disclaimed patent is more...
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