Federal Circuit Summaries

Before Prost, Renya, and Wallach. Appeal from the Patent Trial and Appeal Board.

Summary: A patent owner cannot retroactively bring a continuation-in-part patent within the scope of § 121 during reexamination by removing the new matter and designating it as a divisional.

The ’471 patent was a continuation-in-part (CIP) of two other patent applications. During reexamination, Janssen amended the ’471 patent to remove the new matter and designated it as a divisional of one of the other applications. Janssen then argued that the safe harbor provisions of 35 U.S.C. § 121 shielded the ’471 patent claims from a double patenting rejection. The Examiner maintained the rejections. The Board affirmed, holding that Janssen could not acquire the benefits of § 121 by amending the application during reexamination. Janssen appealed.

The Federal Circuit affirmed. Section 121 applies to divisional applications, not CIP applications. The Federal Circuit relied on its recent decision in Searle, which held that a patent owner could not acquire the benefits of § 121 by amending a CIP application to be a divisional application during reissue proceedings. Further, § 121 provides that a double patenting reference “shall not be used as a reference . . . against a divisional application or against the original application or any patent issued on either of them.” Here, the patent “issued on” a CIP application, not a divisional application, and this could not be changed retroactively through reexamination. Accordingly, § 121 did not apply.