In re Cellect: What In-House Counsel Needs to be Doing Right Now

On August 28, 2023, the Federal Circuit issued a decision in In re Cellect, LLC, affirming the Patent Trial and Appeal Board’s (PTAB) cancellation of claims for obviousness-type double patenting (ODP) over reference claims from earlier expiring patents in the same family in which differences in expiration dates were due solely to patent term adjustment (PTA).
Subject to potential en banc review or petition for certiorari, In re Cellect cements single family double patenting and definitively resolves controversy among district courts and the PTAB. Critically, the Federal Circuit held that:

  1. A patent with a later expiration date than its family member due to PTA can have its claims invalidated for ODP by the earlier expiring family member; and
  2. Such claims are invalid for their entire term, and not just during the PTA period.

What is at risk?
In re Cellect reinforces the importance of building patent portfolios with care and consideration to avoid creation of double patenting landmines that compromise the full statutory term (including PTA) and/or validity of valuable patents relied upon to provide commercial exclusivity.  
The danger is heightened for patents to which PTE has been applied, during which period reference patents in the same family typically will have expired. Such claims may become incurably invalid if action to mitigate is not timely taken. 
What should be done immediately? 
Practitioners should be auditing existing portfolios for ODP issues and implement strategies to address them. Prompt filing of a terminal disclaimer to immunize a patent over reference patent claims before the reference patent expires may be necessary.  
What to consider going forward?

  • Evaluate whether pursuit of additional patents in a family are helpful or harmful to exclusivity
    • Implement claiming strategies that minimize ODP risk and need for terminal disclaimers
      • Note ODP invalidity is assessed on claim by claim basis, but terminal disclaimers impact entire patents
  • Avoid issuing pending claims that may cause ODP problems for existing patents
    • Consider reissue of existing patent to get meaningful claims in a single patent
    • Strategically avail of Safe Harbor under 35 USC 121 whenever possible and avoid breaking consonance
  • Conduct ODP analysis when evaluating third party patent portfolios

You can download the full Federal Circuit decision here.
Please feel free to contact us if you have any questions or would like to discuss how this decision affects your IP strategy. We regularly work with clients on matters related to ODP and are ready to help with your portfolio.  

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