Affirming the double patenting doctrine’s ongoing vitality and justifications, the United States Court of Appeals for the Federal Circuit recently upheld a rejection for an application’s claims under obviousness-type double patenting. In re Fallaux, 564 F.3d 1313 (Fed. Cir. 2009). The Fallaux application claims, which are directed to adenovirus packaging cells for use in gene therapy, were rejected in view of the claims of two issued patents (the Vogels patents) held by a different assignee and which were related only by way of a single common inventor. The initial owner of both patent families divided ownership of the applications, assigning the Vogels patents separately from, and years earlier than, the Fallaux applications.

On appeal, the applicant (Dr. Fallaux) argued that a more lenient two-way obviousness-type double patenting test should apply, rather than the usual one-way test. The oneway test considers only whether the application claims are obvious in light of the reference patent claims; the two-way test additionally considers whether the reference patent claims are obvious over the application claims. The Fallaux application claims would not have sustained a rejection under the two-way test, as the Vogels patents claims are directed to later improvements on the generic invention of the Fallaux application.

The court rejected this argument. The two-way test is available only in the “unusual circumstances” where the PTO is “solely responsible for the delay in causing the second-filed application to issue prior to the first.” The rejected Fallaux claims were filed over a year after the Vogels patents issued, but could have been included in an earlier application in the Fallaux patent family—which consisted entirely of a chain of continuation applications. Dr. Fallaux argued that he filed the new claims to cover a potential product of a competitor unearthed during prosecution of the Fallaux family of patents, and that he prosecuted the patents in the ordinary course of business—not for an improper purpose. The court pointed to these arguments in affirming that Dr. Fallaux was not entitled to application of the two-way test—not as evidence of nefarious intent to manipulate the prosecution, but as evidence that the delay in filing of the claims was attributable entirely to the applicant, not the PTO.

In affirming the Board of Patent Appeals and Interferences’ rejection for double patenting, the court endorsed both the ongoing possibility of unjustified patent term extensions and the potential for harassment by multiple assignees as justification for the doctrine. The court pointed out that the harassment justification for the rejection “is particularly pertinent here” because of the lack of common ownership between the Fallaux application and the Vogels patents. That defect precluded the filing of a terminal disclaimer to overcome the rejection. The court noted this was the applicant’s fault, as it had divided ownership among different entities by assignment.

However, while patent owners should consider double patenting issues when bifurcating ownership of patents with overlapping inventors, the Federal Circuit may have left open a door for challenging the reach of the doctrine in the first instance. The first footnote of the opinion noted that neither party had raised the question of whether the Vogels patents were properly used as a reference for obviousness-type double patenting to begin with—as they share only a single common inventor with the application, not an identical inventive entity or a common assignee. The footnote could signal an invitation to challenge the PTO’s interpretation of the doctrine, as set forth in MPEP § 804 I.A (8th ed., rev. 7, 2008).