Navigating through the Obviousness-Type Double Patenting Minefield

• Date: 01 January 2018

Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Navigating through

the Obviousness-Type

Double Patenting

Mineeld

By Amelia Feulner Baur

and ElizabethA. Doherty

Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Obviousness-type double patenting (ODP) is a judge-made doctrine intended

to prevent a patentee from unfairly extending its patent term by obtaining dif-

ferent patents for essentially the same invention.1 It also facilitates common

ownership of af‌fected patents, which helps to “prevent multiple infringement suits

by dif‌ferent assignees asserting essentially the same patented invention.”2 ODP

occurs where a claim in a later patent is patentably indistinct from (i.e., is either

anticipated or rendered obvious by) a claim in an earlier patent.3

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