Named inventors appealed from the Board of Patent Appeals and Interferences rejection of their application for obviousness-type double patenting over another patent having two inventors in common, but different ownership. Affirming the Board, the Federal Circuit held that common ownership over the application and patent was “immaterial to the policy of preventing harassment by multiple assignees” and that the named inventors were not entitled to a terminal disclaimer.

In re Hubbell, Schense, Zisch, & Hall, No. 2011-1547 (Fed. Cir. Mar. 7, 2013).

Four named inventors from a university appealed the examiner?s rejection of their patent application (’509). The patent application had been abandoned but later continued. While the ’509 application was pending, two of the named inventors moved to another university and were named inventors on a different patent (’685) that was issued. The examiner rejected the ’509 application based on obviousness-type double patenting over the ’685 patent. The Board of Patent Appeals and Interferences held that the ’685 patent claims anticipated the representative claim of the ’509 patent application, and affirmed the rejection of the ’509 application based on obviousness-type double patenting.  

Although the ’509 application and ’685 patent had two inventors in common, they did not have identical inventive entities, common owners, or assignees. The inventors argued that common ownership was a requirement for obviousness-type double patenting and that the ’509 application and ’685 patent shared two common inventors but did not have identical inventive entities or common ownership.  

The Federal Circuit affirmed the Board, holding that “whether the application and patent were ever commonly owned is immaterial to the policy of preventing harassment by multiple assignees” and took judicial notice of the Manual of Patent Examining Procedure, which provides that “[d]ouble patenting may exist between an issued patent and an application filed by the same inventive entity, or by a different inventive entity having a common inventor.” Also, prior case law regarding obviousness-type double patenting recognized “a ’concern over potential harassment of an infringer by multiple assignees asserting essentially the same patented invention,’ even where there was no common ownership.”  

The named inventors were not entitled to a terminal disclaimer because “[a]s a general rule, a terminal disclaimer filed to overcome an obviousness-type double patenting rejection is effective only where the application and conflicting patent are commonly owned.” In addition, the named inventors were not entitled to a two-way obviousness analysis because they admitted partial responsibility for the delay, by abandoning the ’509 application, which allowed the ’685 patent claims to issue first.  

The dissent (Newman, J.) argued that the law of double patenting “never departed from the requirement of either common inventorship or common ownership, and never departed from the available remedy of terminal disclaimer for obviousness-type double patenting.” Therefore, double patenting should not apply because the ’509 application and ’685 patent were never commonly owned.  

A copy of the opinion can be found here.