Does the 2025 Version of PERA Indirectly Sanction Judicially Created, Non-Statutory ODP?

Since its introduction in 2023, the pro-patent community has broadly supported what the draft Patent Eligibility Restoration Act (PERA) said. However, a potentially monumental, unrelated rider seems to have crept in on the last page of the 2025 version:

“Sec. 4. RULES OF CONSTRUCTION

• OBVIOUSNESS-TYPE DOUBLE PATENTING.—

Nothing in this Act, or any amendment made by this Act, may be construed to affect or alter the judicially-created doctrine of obviousness-type double patenting.”

What the heck???

Why did the U.S. Senate Judiciary Committee’s Subcommittee on IP feel the need to slip in a rider on the judicially-created non-statutory doctrine of obviousness-type double patenting (judicially-created ODP) in a bill directed to patent eligibility?

Why did the Subcommittee leave out the words “non-statutory” in its reference in Section 4(a)?

Why was this unrelated Section 4(a) on the judicially created non-statutory doctrine of ODP placed under a heading that was untethered to its contents—and thus didn’t alert the reader to look over here? How does the header “Rules of Construction” highlight to the reader that the bill is now moving from one subject—Patent Eligibility—to a completely different subject with its own labyrinth of constitutional and statutory problems—so-called judicially created ODP?

The Problem with Judicially-Created ODP

I, along with my partner Anthony Prosser, posted an article on IPWatchdog on September 6, 2022, that traces the history of the court’s and the U.S. Patent and Trademark Office’s (USPTO’s) creation of the double patenting doctrine from its beginning. We confirmed that this doctrine is ultra vires because it was never promulgated according to the requirements of the constitutional framework of our government.

We know that Congress has the sole right to create patent law (U.S. Constitution Art. 1, Sec. 8, Cl 8). Congress has never passed a statute legislating a framework of ODP. The ability to file a statutory disclaimer was codified by Congress in the 1952 Patent Act as 35 USC §253. Congress has never provided statutory law to connect §253(b) to “double patenting” nor used the term “double patenting” at all.

The statute did not mention ODP or the use of a terminal disclaimer to overcome it:

“(a)…A patentee, whether of the whole or any sectional interest therein, may make disclaimer of any complete claim…

(b)…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…”

If Congress Wants Judicially-Created ODP in the Statute, It Should Hold Hearings

If Section 4(a) is codified into a PERA bill that is passed, it will be the first time that Congress has referred to the judicially created non-statutory doctrine of ODP in a statute. If Section 4(a) proceeds with no public fanfare, no public announcement and no discussion, it might, if passed, be construed as a sloppy form of ratification of the, to date, unconstitutional application of the judicially created non-statutory doctrine of ODP. It would certainly be quoted by the courts ad nauseum, regardless of the intent of Congress.

Our lawmaking process, our government and our country should not try to pass laws by fiat or obfuscation. The unconstitutionality associated with the current judicially created non-statutory doctrine of ODP is a stain on our system. It deserves the same level of hearings, submissions, depositions, analysis and critical thinking that has been afforded to the patent eligibility issue. It is not a subject to be hidden for the first time in a non-publicized unrelated rider.

The Senate Subcommittee on IP held a Hearing to discuss the 2025 PERA bill on October 8, 2025. Eight experts gave testimony: Mark Cohen, Honorable Andrei Iancu; Honorable David Kappos; Mike Lemon; Richard Blaylock; Steven Caltrider; Sue Peschin and Corey Salsberg. The written transcripts of the testimonies are provided on the Subcommittee website. Each witness gave an impassioned and detailed statement on patent eligibility. As far as I can tell, none of the witnesses ever mentioned the text of Section 4(a), its reference to judicially created ODP, or whether a PERA bill should address a completely different subject in such an indirect fashion. It appears there was silence on this issue.

The Practical Impact of Judicially-Created ODP

The Federal Circuit has made a game of periodically rewriting the rules on ODP, along with jumping cartwheels to try to intellectually prove they have the constitutional right to do so, which undoubtedly the court doesn’t have because these judicial laws are substantive in nature, as they determine the scope of the patent right. Patent attorneys have developed whiplash trying to decipher the ODP rule of the day, including being cursed with the knowledge that any new rules are retroactively applied to patent applications filed before the rule was changed. Gilead v. Natco, 753 F. 3d 1208 (Fed. Cir. 2014);  In re Cellect 81 F. 4^th 1216 (Fed. Cir. 2023); Allergan v. MSN, 111 F. 4^th 1358 (Fed. Cir. 2024). Businesses with long development times get the worst of this momentous serendipity. And because a Petition to Withdraw a Terminal Disclaimer can only be filed at the USPTO during the pendency of a patent application, patentees are stuck with the limitations of terminal disclaimers that would not have been required by the Federal Circuit as it changes the law at will.

The approach to applying the unconstitutional doctrine of non-statutory ODP has serious real-world effects. It impedes U.S. commerce and our ability to compete as well as our ability to protect U.S. markets against foreign competitors. The current judicially applied, non-statutory law makes our country a weaker global competitor. Neither Europe nor China has such a law.

Office Actions issued by the USPTO, and most importantly, to inventors who have long product development times, are jammed with numerous double patenting rejections, including on patents long ago filed, and sometimes even expired patents (to which §103 should solely be applied). In addition, the USPTO has extended the doctrine to include the use of a patent applicant’s own claims in combination with a third-party reference to create an obviousness issue for a double patenting rejection, which should be nonsensical. And it goes without saying that such application has no authority in U.S. statutes, which only provides for the following:

1. 1. Claims in applications by the same assignee entitled to the same priority date:

There is no prior art effect because §103 refers to prior art, which by definition has to have existed the day before the priority date of the application.

1. 2. Claims in applications by the same assignee with different priority dates, where the first application was not published before the priority date of the second application:

There is no prior art effect for obviousness under 35 USC 102(b)(2)(c) as revised by Congress’ 2011 America Invents Act.

1. 3. Claims in applications by the same assignee with different priority dates where the first application is published before the priority date of the second application:

The first application is full prior art against the second application for obviousness.

We Support PERA—It Should Not Be Misused to Codify Judicially-Created ODP

The icon Hon. Judge Paul Michel has been a tireless warrior to bring the law on patent eligibility back to its constitutional roots. He is revered by all who meet him for his authenticity and drive to create a better IP landscape in the U.S. The PERA bill is one of his efforts. It should not be diluted or misused as a surrogate to incidentally ratify by reference for the first time the judicially created non-statutory doctrine of ODP. We stand with Judge Michel in his efforts to fix patent eligibility. In considering PERA, I commend you to S. Knowles and A. Prosser, “Unconstitutional Application of 35 U.S.C. §101 by the U.S. Supreme Court” 18 J. Marshall Rev. of Intell. Prop. L. 144 (2018).

Let’s delete Section 4(a) of the 2025 PERA bill and give PERA its day exclusively to consider patent eligibility. Let’s then give the judicially created non-statutory doctrine of ODP issues the same amount of Congressional and stakeholder time for intense and independent review.

Thanks to my partner Brent Bellows for first noticing this 2025 change to PERA.