Chapter §12.10 One-Way Versus Two-Way Test for Obviousness-Type Double Patenting

• Jurisdiction: United States

§12.10 One-Way Versus Two-Way Test for Obviousness-Type Double Patenting

A typical situation raising obviousness-type double patenting concerns involves an inventor who files a first application on a "basic" invention and thereafter files a second application directed to a follow-on version or "improvement" of the basic invention. In most cases, based on the order of filing (and assuming all patentability requirements are satisfied for the basic invention), the first-filed application on the basic invention issues as a patent while the second application on the improvement is still pending.

If a USPTO examiner is concerned that the basic and improvement inventions of this example are not patentably distinct, she would apply a "one-way" test for obviousness-type double patenting. The one-way test asks whether the claims of the second application (here, the improvement application) are patentably distinct over the claims of the inventor's already-issued patent (here, the basic patent). In other words, the patent is the "reference," the claims of which are used as the basis of the examiner's rejection of the second application's claims for obviousness-type double patenting.

In some cases, however, the patents on the basic and improvement inventions may issue out of order; that is, the second-filed application claiming the improvement invention may issue as a patent while the first-filed application claiming the basic invention is still pending. The reversed order of issuance may result from delays caused by the applicant and/or delays caused by the USPTO. Determining which entity is responsible for the delay governs whether the one-way test or a "two-way" test, described below, will be applied to assess double patenting.

If the patent applicant is responsible for the delay, the one-way test will be applied, with the claims of the issued patent being applied as the "reference" against the first-filed application. In other words, the USPTO examiner would ask whether the claims of the still-pending first-filed application (the basic application) are patentably distinct over the claims of the patent that issued from the second-filed (improvement) application.

If the USPTO is responsible for the delay, however, the applicant gets the benefit of a "two-way" test for obviousness-type double patenting. The two-way test asks not only whether the claims of the still pending, first-filed (basic) application are patentably distinct over the claims of the patent that issued from the second-filed (improvement) application, but also whether the claims of the patent (improvement patent) are patentably distinct over the claims of the still-pending, first-filed (basic) application.¹⁶⁰ In this situation, "the order of issuance is, in effect, ignored, and the relevant determination becomes whether the improvement is patentably distinct from the generic [/basic] invention."¹⁶¹

The two-way test arose out of the concern that the law should

prevent rejections for obviousness-type double patenting when the applicants filed first for a basic invention and later for an improvement, but, through no fault of the applicants, the PTO decided the applications in reverse order of filing, rejecting the basic application although it would have been allowed if the applications had been decided in the order of their filing. ¹⁶²

Application of the two-way test recognizes "that an applicant (or applicants), who files applications for basic and improvement patents should not be penalized by the rate of progress of the applications through the PTO, a matter over which the applicant does not have complete control."¹⁶³

Today, the Federal Circuit considers the two-way test a "narrow exception" to the "general rule" of the one-way test.¹⁶⁴ The delay must be solely the fault of the USPTO to justify application of the two-way test.¹⁶⁵

For example, the Federal Circuit denied an applicant the benefit of the two-way test in In re Fallaux.¹⁶⁶ In 1997, Dr. Fallaux and three other inventors (collectively "Fallaux") filed what would become the first-filed, parent application in a chain that would also include five continuation applications. The fifth continuation application, filed in 2003 and claiming priority to the 1997 parent application, included claims characterized as the "basic" invention. The USPTO rejected the claims of this application (the "Fallaux application") for obviousness-type double patenting in view of the claims of two patents (the "Vogels patents") that shared one common inventor with the Fallaux application.¹⁶⁷ The claims of the Vogels patents were directed to an "improvement" invention; specifically, "the use of a species of the generic invention claimed in the Fallaux claims."¹⁶⁸ The applications that resulted in the Vogels patents were filed in 1998 and 1999 (hence, not prior art to the Fallaux application, effectively filed in 1997). Thus, the basic fact scenario of Fallaux is the reverse issuance situation that...