In re Jeffrey Hubbell: An Inventor Changing Jobs Creates Double Patenting Problem

A patent practitioner prosecuting an application would not normally worry about an issued patent having a much later filing date. The CAFC’s Hubbell decision shows, however, that such a patent can create a problem under the doctrine of obviousness-type double patenting, that prevents the earlier-filed application from issuing.


Hubbell is an inventor of U.S. Application 10/650,509. Hubbell appeals from the decision of the Board of Patent Appeals and Interferences affirming the Examiner’s final rejection of his claims for obviousness-type double patenting over U.S. Patent No. 7,601,685, which also names Hubbell as an inventor. The ‘509 application was filed on August 27, 2003, but claims benefit of a provisional application filed in 1997 when Hubbell was a professor at CalTech. Thus, the ‘509 application is assigned to CalTech.

Hubbell left CalTech and joined the faculty at Eidgenossische Technische Hochschule Zurich (“ETHZ”) in 1998. The application which issued as the ‘685 patent was filed on December 17, 2002 and is jointly assigned to ETHZ and Universitat Zurich. It is undisputed that the ‘509 application and the ‘605 patent do not have identical inventive entities, nor do they have common assignees. It is also undisputed that the ‘685 patent is not available as prior art under 35 USC §§ 102 or 103. The Patent Office concluded that the ‘685 patent claims “are a species of the instantly claimed invention and thus anticipate the claimed invention,” in making its obviousness-type double patenting rejection.


CAFC’s Decision:

Obviousness-type double patenting is a judicially created doctrine designed to “prevent claims in separate applications or patents that do not recite the ‘same’ invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1373 (Fed. Cir. 2005) (citation omitted).

There are two justifications for the prohibition against obviousness-type double patenting. The first is “to prevent unjustified extension in patent term, no matter how the extension is brought about.” In re Van Ornum, 686 F.2d 937, 943-44 (Fed. Cir. 1982). The second rationale is to prevent multiple infringement suits by different assignees asserting essentially the same patented invention. In re Fallaux, 564 F.3d 1313, 1319 (Fed. Cir. 2009).

Here, Hubbell argued that obviousness-type double patenting is not appropriate where the application and the conflicting claim (1) share common inventors but do not have identical inventive entities, (2) were never commonly owned, and (3) are not subject to a joint research agreement. The Patent Office countered that: (1) whether the application and patent were ever commonly owned is immaterial to the policy of preventing harassment by multiple assignees; (2) identity of inventorship is not required where there is an overlap in inventors; (3) Hubbell did not establish any grounds for being allowed to file a terminal disclaimer; and (4) two-way obviousness analysis is not required because Hubbell admitted that he partially is responsible for the delay that caused the ’685 patent claims to issue first. The CAFC agreed with the Patent Office on each point.

With respect to the Patent Office’s points (1) and (2), the CAFC emphasized that the MPEP provides that obviousness-type double patenting may exist between a patent and an application filed by “the same inventive entity, or by a different inventive entity having a common inventor, and/or by a common assignee/owner.” MPEP § 804(I)(A) (emphasis added).

With respect to point (3), Hubbell argued that he should be entitled to file a terminal disclaimer if obviousness-double patenting applies. However, since there is no common ownership, the CAFC concluded that a terminal disclaimer was not possible.

With respect to point (4), the CAFC pointed out that the two-way test is appropriate only in the “unusual circumstance” where “the PTO is solely responsible for the delay in causing the second-filed application to issue prior to the first.” Two-way analysis does not apply because Hubbell was partially responsible for the delay because of certain prosecution choices that resulted in the ‘685 patent issuing first before the Hubbell application.

Newman’s Dissent:

Judge Newman dissented, believing that a double patenting rejection, when there is neither common inventorship nor common ownership, is contrary to statute and precedent. She stated:

The law of double patenting evolved in various factual situations, but never departed from the requirement of either common inventorship or common ownership, and never departed from the available remedy of terminal disclaimer for obviousness-type double patenting. This remedy draws on the 1952 codification that any patentee or applicant may “disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted,” 35 U.S.C. §253. As explained by P.J. Federico, Examiner-in-Chief of the United States Patent Office and a draftsman of the 1952 Act: No specific reason for this provision appears in the printed record, but its proponents contemplated that it might be effective in some instances, in combating a defense of double patenting, to permit the patentee to cut back the term of a later issued patent so as to expire at the same time as the earlier issued patent and thus eliminate any charge of extension of monopoly. 35 U.S.C.A. 1, 49 (1954), reprinted at 75 J. Pat. & Trademark Off. Soc’y 161 (1993).

Practice Tips:

Companies must be aware of their employee s’ inventions before, during and after employment. As illustrated in this case, an ex-employee’s later species invention may bar a much earlier-filed genus invention. Furthermore, prosecution delays by an applicant are likely to preclude resort to the two-way obviousness analysis.


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Join the Discussion

5 comments so far.

  • [Avatar for Steve M]
    Steve M
    March 15, 2013 12:14 pm

    Thanks Steve.

  • [Avatar for Steve Adrian]
    Steve Adrian
    March 15, 2013 08:57 am

    Steve M,

    If Caltech or ETHZ owned them both, then there is no problem in filing a terminal disclaimer. That is certainly a possibility going forward as long as the application is still pending. ETHZ is in the catbird seat now with the issued patent, so they may want a lot in exchange for an assignment to make the owner common.

  • [Avatar for EG]
    March 15, 2013 06:54 am


    When the “Grand Dame” of the Federal Circuit decides to hang up her judicial robes, we’re going to be in a “world of hurt.”

  • [Avatar for Steve M]
    Steve M
    March 14, 2013 09:14 pm

    Thanks guys.

    What if CalTech or ETHZ owned them both? Then could ‘509 issue?

    If this is/would have been a solution, is it now too late for either entity to sell to solve this dilemma?

    If it’s too late now, do you have any thoughts on when it become too late?


  • [Avatar for step back]
    step back
    March 14, 2013 05:11 pm

    Where will we be when Judge Newman is no longer around to insist that the rest of the judges play according to the rules of law rather than according to their arbitrary whims?

    Steve & Scott, thanks for writing up this article. Yes that decision by the majority is deeply troubling.