Beyond the Patent Act: Judicially Created Doctrines and the Life Sciences Patent Bargain *

Beyond the Patent Act: Judicially Created Doctrines and the Life Sciences Patent Bargain *

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Some of the most consequential restrictions on U.S. patent rights cannot be found in the text of the Patent Act. Patent eligibility exceptions, obviousness-type double patenting, prosecution laches and inequitable conduct are among the doctrines created or substantially developed by courts that can determine whether an issued patent remains valuable and enforceable.

For the life sciences industry, where development timelines are long, continuation families are common and investment decisions depend on rights that may not be tested for many years, the stakes are particularly high. This panel will examine the growing importance of judicially created patent doctrines and the fundamental separation-of-powers questions they raise. Where is the appropriate boundary between interpreting the Patent Act and adding requirements Congress never enacted? How should courts account for reliance on longstanding USPTO practices and statutory rights? And what happens to the life sciences patent bargain when the rules governing valuable portfolios can change years – or decades – after the original investment was made?

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Materials

PTAB ARP Issues Precedential Decision on Obviousness-Type Double Patenting, Asks CAFC for More Clarity

Global U.S. Patent Standing Falls Due to Judicially-Created Patent Law

SCOTUS Must End Prosecution Laches Before It Becomes a Patent Killing Machine

Inequitable Conduct Lives: Patent Practitioners Beware