An update on developments in the US was provided during the Finnegan “A Year in Review” seminar. Anthony Tridico noted that there are now “Three Kings” in the US: the Supreme Court of the United States, the Federal Circuit and the Patent Trial and Appeal Board (PTAB).
Anthony noted that the PTAB has become the number 1 most active jurisdiction in the US after only two years of operation.
First up however was the Federal Circuit and a case relating to double patenting.
Double patenting objections in the US exist to prevent the unjustified time extension of patent rights for the same invention (not such an issue now with 20 year patent terms in the US) and to prevent the public being harassed by the owners of patent rights that are virtually identical. Objections in the US can either be statutory objections for the “same invention” or obviousness type objections.
The case discussed in this section of the talk was Gilean Scis. Inc v. Natco Pharma Ltd, No. 2013-1418 (Fed Cir. 2014) in which Gilead obtained two patents, the ‘375 patent and the ‘483 patent.
In this case the ‘375 case was filed first but granted second compared to the ‘483 patent (in other words the filing, prosecution and grant of the ‘483 patent all took place during the prosecution of the ‘375 case). Gilead filed a terminal disclaimer on the ‘375 patent based on the ‘483 patent. The two patents had the same inventors but did not claim a common priority.
Reversing a decision from the District Court the Federal Circuit (in a split decision) said that the terminal disclaimer needed to be filed on both patents. The decision meant that the events that occurred in later prosecution impacted the earlier granted patent.
Having to file terminal disclaimers in two directions could impact the patent term of an earlier granted case. In the case of Gilead the earlier granted case was actually the later filed case and the patent term was affected.
Anthony suggested that this Federal Circuit decision could have significant impact in pharma cases where valuable patent term for a blockbuster drug could be restricted.
The key take-aways from this section of the talk were that all co-owned patents are potentially vulnerable to obviousness-type double patenting and the disclosure of speculative uses should be avoided to avoid such objections.
Patent Trial and Appeal Board
In just over two years of operation the PTAB has seen over 2500 cases. Over three quarters of the petitions relate to the computer and business method areas.
There is a hurdle in getting a case to be considered but around 70% of all cases filed have been taken on by PTAB.
According to Finnegan research, as of 1 Feb 2015 there had been 196 final written decisions. Of these 196 decisions only two patents had been amended, 13% of the patents survived entirely and a whopping 70% were completely taken out.
Mark Richardson 12 March 2014