Non-statutory obviousness-type double patenting. It is quite a mouthful, and as just as difficult to say quickly three times fast as it is to try to understand when slogging through the relevant sections of the Manual of Patent Examining Procedure (MPEP). While the name and analysis are complicated, the principle is not–the courts have stated that a patent applicant should not be allowed to patent the same invention merely by filing a second patent application on it later in time.
Reviewing approximately the last six months of ex parte appeals decisions by the Patent Trial and Appeal Board (PTAB), the Board considered this issue in 197 decisions. In 37 cases, the Board reversed the Examiner’s determination for at least one claim; in 29 of the decisions, the Board’s reversal was for all claims.
The total reversal rate (14.7%) for this issue is lower than that observed over the same period in even non-statutory subject matter cases (see our most recent posts). We suspect there are likely many reasons for this result. Here are some possibilities:
- Appellants may not be contesting this issue on appeal as it can be relatively easily handled later through filing a terminal disclaimer. This is supported by the large number of summarily affirmed dispositions, meaning the Board affirmed the rejection because the applicant failed to raise any arguments on the issue.
- The issue is a narrow, technical one that Examiners and the Board find more black and white.
- For many industries (other than biotech or pharmaceuticals), extra patent term is not as commercially important, so many applicants are choosing not to incur additional cost seriously contesting this issue on appeal. Instead, they are fine with filing a Terminal Disclaimer to render the rejection moot.