Stephen McBride

Recent U.S. Court of Appeals for the Federal Circuit decisions have gutted 35 U.S.C. §315(e)(2). Last week, in Ingenico Inc. v. IOENGINE, LLC, 2025 WL 1318188 (Fed. Cir. 2025), the Federal Circuit resolved an open issue regarding IPR estoppel in district court, holding that system art is never subject to IPR estoppel under 35 U.S.C. §315(e)(2). But Ingenico went much further and also held that “IPR estoppel does not preclude a petitioner from relying on the same patents and printed publications as evidence in asserting a ground that could not be raised during the IPR, such as that the claimed invention was known or used by others, on sale, or in public use.”

This year was a busy one for U.S. Patent and Trademark Office (USPTO) policy changes, with a number of proposed rules packages introduced, proposed legislation being considered by Congress, and several U.S. Court of Appeals for the Federal Circuit and Supreme Court decisions that are likely to have lasting impacts on the USPTO. Now, we await potentially significant changes under the incoming Trump Administration and a new Director. Below, we’ve recapped a number of the more significant changes and proposed changes.

The first half of 2024 was a busy time for rulemaking at the United States Patent and Trademark Office (USPTO), with five different notices of proposed rulemaking. While the first three proposed rules packages are relatively straightforward and uncontroversial, the last two propose highly contentious rules that are likely to generate significant opposition.

In Part I of this two-part article, we reviewed the origins of the judicially-created doctrine of obviousness-type double patenting (ODP) and laid out the background on how the U.S. Court of Appeals for the Federal Circuit arrived at the 2023 In re Cellect decision. Here, we delve deeper into the case law and explain a simple fix for many present-day ODP problems.

The judicially-created doctrine of obviousness-type double patenting (ODP) originated long ago as a shield to protect the public against unwarranted patent term extension (PTE). The Uruguay Round Agreements Act of 1994 (URAA) removed most of these concerns when it changed statutory term from 17 years from issue to 20 years from earliest effective filing date. By limiting patent families to a single 20-year term, the URAA eliminated the ability of patent owners to indefinitely extend the term of their invention by filing successive continuations claiming similar subject matter. After the URAA, all patents in a family are effectively limited to the 20-year term of the first-filed patent, plus an occasional modest term extension due to regulatory delays (PTE) or delays at the U.S. Patent and Trademark Office (USPTO) (Patent Term Adjustment (PTA)).