Aaron Reinhardt

Obviousness-type double patenting (“ODP”) is a judicially created doctrine aimed at preventing patent owners from extending patent protection beyond the statutorily afforded term. Prior to the Uruguay Round Agreements Act (“URAA”) of 1994, which changed the term for a U.S. patent from seventeen years from patent issuance to twenty years from the earliest (non-provisional) filing date, patent applicants could theoretically extend their patent term without end. For example, a series of patent applications covering the same or similar subject matter, with slightly different claims could be filed. Further, applicants could try to intentionally delay prosecution and, thus, stagger issuance of the resulting patents. After the switch to a twenty year term from the earliest (non-provisional) filing date by the URAA, it has been advocated that the ODP doctrine is now moot and should be eliminated, because applicants can no longer serially extend patent term. However, the Federal Circuit’s decisions in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2014), and Abbvie v. Mathilda & Terence Kennedy Institute, 764 F. 3d 1366 (Fed. Cir. 2014), have reaffirmed the ODP doctrine.