January 29, 2018

Worried about Obviousness-type Double Patenting?: If you get a restriction requirement, then use it to file divisionals. 

Since the “Gilead case,” many of us worry about terminal disclaimers for Obviousness-type Double Patenting erasing any Patent Term Adjustment.  With Divisional applications that worry should be abated since 35 U.S.C 121 has been interpreted to prohibit claims in a divisional application (filed following a restriction requirement) from being cancelled or rejected based upon the parent application.

IMPORTANT: For you to use the safety net of 35 U.S.C 121, you need to file a divisional application.

• File New Application, in view of the restrition requirement, as a Divisoinal
• You cannot simply file a new continuation or continuation-in-part and then take advantage of 35 U.S.C 121.
• You cannot go back and fix your continuation by trying to convert it to a divisional.
  • J&J / NYU tried this with their Remicade patents and it didn’t work.

Remicade case:

• In re Janssen and NYU  (Johnson & Johnson)  (Fed. Cir. 2018).

Take home message: The “CIPs” in the graphic below should have been “Divisionals.”

Patently-O Post:

https://patentlyo.com/patent/2018/01/patent-blockbuster-remicade.html

Rothwell, Figg Post:

http://www.ptablaw.com/2018/01/30/strict-limits-3-u-s-c-§-121s-safe-harbor-provision-intersection-two-blogs/