The United States Constitution states that Congress shall have the power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. See U.S. Const. art. I, § 8, cl. 8.

Certain provisions in the Patent Act provide the conditions for patentability, namely 35 U.S.C. §§ 101 (eligibility), 102 (novelty), 103 (non-obviousness), and 112 (written description, enablement, and definiteness). Those are all set forth by Congress in the Patent Act.

Based on the language in § 101 that an inventor may only obtain “a patent” for his invention, statutory double patenting prohibits a patentee from obtaining two patents to the same invention. See, e.g., In re Goodman, 11 F.3d 1046, 1052 (Fed. Cir. 1993) (“If the claimed inventions are identical in scope, the proper rejection is under 35 U.S.C. § 101 because an inventor is entitled to a single patent for an invention.”).

As the case law developed over the years, however, courts established a second form of double patenting—non-statutory double patenting or “obviousness-type double patenting,” often abbreviated as “OTDP.” OTDP “is a judicially created doctrine adopted to prevent claims in separate applications or patents that do not recite the ‘same’ invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1373 (Fed. Cir. 2005). To obtain claims in a subsequent patent application shared by common owners, the application must recite claims that are “patentably distinct” from the earlier-filed patent. If not, OTDP seeks to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first patent.

Its exact date of origin is unclear, but likely the earliest judicial opinion discussing OTDP (and most oft cited) is Judge Giles Rich’s concurrence in In re Zickendraht, 319 F.2d 225, 231 n.4 (CCPA 1963), in which he noted:

 

  1. Does the judiciary have the authority to require a patent applicant to meet a condition for patentability not required by the Patent Act?
  2. Is the judicially created doctrine of non-statutory double patenting ultra vires?

SawStop delineates statutory double patenting from OTDP, acknowledging that § 101’s provision that whoever invents an invention “may obtain a patent therefor” supports the restriction from obtaining a second patent for the same invention. But SawStop explained in its petition that its claims are directed to separate inventions and therefore should not be barred by § 101. Petition for writ of certiorari, June 29, 2022, at 7.

Nor should they be barred by a judicially-created exception, SawStop argued. Specifically, SawStop argued that the Constitution “gives Congress, not the judiciary, the authority to impose conditions for patentability.” Id. at 6, 11 (citing Graham v. John Deere, 383 U.S. 1, 6 (1966). SawStop argues, however, that the Federal Circuit “has imposed an additional condition for patentability beyond what Congress requires,” which SawStop argues is unconstitutional. Id.

Takeaways:

This petition is sure to garner attention from practitioners and patent applicants alike, as the Supreme Court’s rejection of the OTDP doctrine would have major implications on pending cases with OTDP rejections. It would also certainly impact the Patent Office’s patentability requirements for pending patent applications.

Moreover, in recent years, the composition of the Supreme Court has shifted, and the current Court has taken a much more originalist view of the Constitution and textualist approach in interpreting statutes passed by Congress. That said, it will be interesting to see whether the Court grants certiorari, and if so, how the Court reconciles the judicially-created doctrine of OTDP with other judicially-created patent doctrines such as infringement under the doctrine of equivalents, which the Court has upheld. See, e.g., Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997) (“Petitioner, which was found to have infringed upon respondent’s patent under the doctrine of equivalents, invites us to speak the death of that doctrine. We decline that invitation.”).

The Government waived its right to a response to SawStop’s petition on August 1, 2022. The petition was distributed for the Court’s Sept. 28, 2022 conference. See SawStop Holding LLC v. USPTO, No. 22-11.