Addressing an obviousness-type double patenting rejection, the U.S. Court of Appeals for the Federal Circuit upheld a decision by the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), finding that obviousness-type double patenting can exist even when there is no common ownership.  In Re Hubbell,Case No. 11-1547 (Fed. Cir. Mar. 7, 2013) (O’Malley, J.) (Newman, J, dissenting).

This case arose from an appeal from the decision of the Board affirming an examiner’s final rejection of all pending claims of a patent application for obviousness-type double patenting.  An obviousness-type double patenting rejection prohibits the issuance of claims in a second patent that are not patentably distinct from claims in a first patent.  The rejection works to prevent an unjustified extension of the right to exclude and prevents multiple infringement suits by different assignees asserting essentially the same patented invention.

The rejected application and the patent used as the basis for the rejection were owned by two different institutions, and each resulted from research conducted by certain inventors while employed at each of the respective institutions at various points in time.  The rejected application was a continuation of a parent application that was filed before the priority date of the patent used in the double patenting rejection.  During prosecution of the rejected application, the examiner found that certain claims of the reference patent were a species of the claimed invention in the rejected application and thus rejected the application claims based on obviousness-type double patenting. 

The Board affirmed the examiner’s rejection, finding that the genus claim in the rejected application was anticipated by issued species claims of the reference patent.  The Board further determined that common ownership was not required where the rejected application and the reference patent shared common inventors.  Jeffrey Hubbell appealed to the Federal Circuit.

On appeal, Hubbell argued that the obviousness-type double patenting rejection was improper because the rejection required common ownership. Alternatively, Hubbell argued that he should be allowed to file a terminal disclaimer, or that a two-way obviousness analysis should have been conducted by which the rejection would have only been appropriate if the claims of the later-filed reference patent were an obvious variation of the claims of the rejected application.

The Federal Circuit disagreed, concluding that when assessing obviousness-type double patenting rejections, a complete identity of inventors or common ownership is not required.  The Court also explained that a terminal disclaimer was not available to Hubbell to overcome the rejection because the rejected application and the reference patent were not commonly owned, and there is no Sec. 103 (c)-type joint research agreement between the assignees.  Compounding Hubbell’s problems, the Court also explained that a two-way obviousness analysis was not applicable because Hubbell admitted that he was at least partially responsible for the delay.  The Court therefore affirmed the Board's decision of unpatentability of the application claims based on obviousness-type double patenting. 

Dissenting, Judge Newman strongly argued that the majority decision is a “departure from the principles of the law of double patenting” and that the Court “need not create a new protocol wherein the contributions of distinct entities and separate ownership are rejected for ‘double patenting’ instead of examined under the established rules.”

Practice Note:  Practitioners should be aware that when common ownership does not exist, obviousness-type double patenting may still be asserted by the PTO but a terminal disclaimer may not be available to overcome the obviousness-type double patenting rejection.