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May 6, 2009

Doubled Over

Dr. Frits Jacobus Fallaux stumbled into a continuation dilemma. The fifth in a family series ran into a double patenting rejection. Earlier patents in the family only one shared inventor in the family, and the earlier patents were owned by a different assignee at the time of rejection. The examiner applied the normal one-way test for obviousness-type, i.e., non-statutory double patenting on some claims. Unable to file a terminal disclaimer to eliminate the issue, because of the earlier patents being assigned away, Fallaux countered that the more rarely applied two-way test was appropriate.

In re Fallaux (CAFC 2008-1545) precedential

MPEP § 804: "A rejection based on a nonstatutory type of double patenting can be avoided by filing a terminal disclaimer in the application or proceeding in which the rejection is made."

See, e.g., In re Lonardo, 119 F.3d 960, 965 (Fed. Cir. 1997) ("The doctrine of double patenting is intended to prevent a patentee from obtaining a time-wise extension of [a] patent for the same invention or an obvious modification thereof."). It is true that the unjustified patent term extension justification for obviousness-type double patenting has limited force in this case. Indeed, this is surely true of many double patenting rejections today, in no small part because of the change in the Patent Act from a patent term of seventeen years from issuance to a term of twenty years from filing. See 35 U.S.C. § 154; Uruguay Round Agreements Act, Pub. L. No. 103-465, 108 Stat. 4809 (1994). Nonetheless, we do not think that we may disregard all of our cases relying on this justification for obviousness-type double patenting. In some cases there may still be the possibility of an unjust time-wise extension of a patent arising from patent term adjustment under § 154 or patent term extension under § 156.

The twist in this case was the continuation chain.

The reference patents for the double patenting rejection on appeal--the Vogels patents--are related to the Fallaux application only by way of a single common inventor--Abraham Bout.1

1 Neither party raised or argued the question of whether a patent may be used as a reference for an obviousness-type double patenting rejection where the patent shares only a common inventor with the application, rather than an identical inventive entity or a common assignee. The Manual of Patent Examination Procedure (MPEP) allows such a rejection. See § 804 ¶ I.A (8th ed., rev. 7, 2008) ("Double 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, and/or by a common assignee/owner."). This opinion should not be read to decide or endorse the PTO's view on this issue.

Fallaux couldn't escape by filing a terminal disclaimer because ownership was bifurcated.

[T]he Fallaux application and the Vogels patents are not commonly owned. If the Fallaux application and the Vogels patents were commonly owned, the terminal disclaimer filed in this case would have been effective to overcome the double patenting rejection. We note that this defect was of the applicant's creation as through assignment it allowed ownership of the applications to be divided among different entities. 5

5 Dr. Fallaux attempted to overcome the obviousness-type double patenting rejection by disclaiming the terminal period, if any, beyond June 14, 2016, of any patent granted on the Fallaux application. The examiner could not accept the disclaimer because the assignee of the Fallaux application, Crucell N.V., did not establish that it also owned the Vogels patents--a requirement for terminal disclaimers under 37 C.F.R. § 1.321. Initially, the patents in both families were owned by the same entity, IntroGene. On October 18, 2001, IntroGene assigned the Vogels patents to Crucell N.V. Crucell N.V. assigned the Vogels patents to Galapagos Genomics B.V. on the same day. On March 23, 2006, IntroGene assigned the Fallaux application to Crucell N.V., which still owns the application. Crucell N.V. filed the terminal disclaimer on May 1, 2007, after it divided the ownership of the Fallaux application and Vogels patents.

Under the two-way test, the examiner would have been required to show that the instant claims were obvious in light of previous ones in the family, a test that the examiner agreed with Fallaux would have failed, and the rejection overcome. But the examiner stuck to his guns that the one-way test was appropriate, because the two-way test is only applicable if the issuance of the prior patents "was due to administrative delay on the part of the PTO."

Fallaux, no evidence at hand regarding PTO delay, lost at the BPAI.

"In determining double patenting, a one-way test is normally applied, in which 'the examiner asks whether the application claims are obvious over the patent claims.'" In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371, 1375 (Fed. Cir. 2008) (quoting In re Berg, 140 F.3d 1428, 1432 (Fed. Cir. 1998)). The two-way test "is a narrow exception to the general rule of the one-way test." Berg, 140 F.3d at 1432. When applying the two-way test, "the examiner also asks whether the patent claims are obvious over the application claims." Id. The two-way test arose out of the concern

to prevent rejections for obviousness-type double patenting when the applicants filed first for a basic invention and later for an improvement, but, through no fault of the applicants, the PTO decided the applications in reverse order of filing, rejecting the basic application although it would have been allowed if the applications had been decided in the order of their filing.

Id. "The two-way test is only appropriate in the unusual circumstance where, inter alia, the United States Patent and Trademark Office (PTO) is 'solely responsible for the delay in causing the second-filed application to issue prior to the first.'" Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 n.7 (Fed. Cir. 2001) (quoting Berg, 140 F.3d at 1437); see also Basell, 547 F.3d at 1376; Emert, 124 F.3d at 1461 (applying the one-way test because the applicant "had significant control over the rate of prosecution of the application," "was responsible for the delays in prosecution," and "orchestrated the rate of prosecution"); In re Goodman, 11 F.3d 1046, 1053 (Fed. Cir. 1993) (applying the one-way test because "PTO actions did not dictate the rate of prosecution"); MPEP § 804 ¶ II.B.1.(b) (8th ed., rev. 7, 2008) (advising that the two-way test should be applied when "there is administrative delay"). In short, the applicant is entitled to the narrow exception of the two-way test when the PTO is at fault for the delay that causes the improvement patent to issue prior to the basic patent.

Dr. Fallaux did not show--nor is there any evidence to suggest--that the PTO shared any responsibility for the delay.

Affirmed.

Posted by Patent Hawk at May 6, 2009 11:42 PM | Prosecution

Comments

"Under the two-way test, the examiner would have been required to show that the instant claims were obvious in light of the previous ones, a test that the examiner agreed with Fallaux would have failed, and the rejection overcome. But the examiner stuck to his guns that the two-way test was appropriate, because the one-way test is only applicable if the issuance of the prior patents "was due to administrative delay on the part of the PTO.""

There has to be a typo in here somewhere. I think you need to replace the last "examiner" with the apps name.

Posted by: 6 at May 7, 2009 1:22 AM

"Rather than file a terminal disclaimer to overcome, which would have limited patent term,"

Not quite so, Hawk, for applications filed after June 8, 1995. See Decision page 8. The reason Fallaux did not (could not) file the terminal disclaimer was that the applications were not (or were no longer) commonly owned. See the final footnote. See also:

http://www.oblon.com/Pub/gholz1198.html

Terminal disclaimers mean little now as "disclaimers", except that common ownership of the terminally disclaimed patents must be maintained (i.e., you cannot sell one, for licensing by a third-party, while keeping the other for licensing by yourself). (There is also the question of patent term extensions under 35 USC 154. See decision at page 9: "In some cases there may still be the possibility of an unjust time-wise extension of a patent arising from patent term adjustment under § 154 or patent term extension under § 156.")

http://www.uspto.gov/web/offices/pac/mpep/documents/0800_804_02.htm

I suspect the one-way test will torpedo new Rules 75 and 78 in any legal challenge, should the PTO move forward with them. The rule writer(s) either did not understand the tests or got them confused (ioncorporating the one-way test at FR 46785). Basically, with pendencies nearing 10 years in some arts, the one-way test means that (under the new rules) in all your pending "improvement" applications filed subsequently to your pending "basic" application(s), you can only have 5/25 claims (combined total number of claims in all pending applications), assuming e.g. the improvement applications have narrower (more detailed) claims than your basic application(s). Nipra quiz at Question 12:

http://www.nipra.org/ddpatents074.htm

Posted by: niRPa at May 7, 2009 2:33 AM

"I suspect the one-way test will torpedo new Rules 75 and 78 in any legal challenge, should the PTO move forward with them. The rule writer(s) either did not understand the tests or got them confused (ioncorporating the one-way test at FR 46785). Basically, with pendencies nearing 10 years in some arts, the one-way test means that (under the new rules) in all your pending "improvement" applications filed subsequently to your pending "basic" application(s), you can only have 5/25 claims (combined total number of claims in all pending applications), assuming e.g. the improvement applications have narrower (more detailed) claims than your basic application(s)."

And how is that a problem that would torpedo rules? It isn't.

Posted by: 6000 at May 7, 2009 11:10 AM

Hawk, do tell, before I have to actually agree with 6.

Are you coming from the angle that the 5/25 are hard limits and that one way/two way tests may somehow push families over the 5/25 limits resulting in an unacceptably arbitrary rule?

If this is the case, you can relax since the fact that 5/25 are not hard limits, but rather simply check points to the ESD requirements. I’m sure you also realized that with the Tafas v. Doll ruling, the Office can apply ESD to all applications and when they downsize 80% of the examiners (buh bye 6), they will have the applicants completing ESD’s for everything (see, no arbitrariness your honor).

Posted by: Noise above Law at May 7, 2009 11:31 AM

Noise, see Nipra quiz Question 12. I can't explain it simpler than that.

The problem is with family members filed before (or worse, acted on by the Office before) the rules become effective, which can be pending (churning) for many years thereafter... during which we would hope R&D will lead to the filing of improvement applications (under the new rules) with narrower, non-obvious claims.

For example, in the case of a basic application FAOM'd before the rules, no ESD *can be* submitted, regardless of whether ESDs are submitted with the later-filed improvement apps. A one-way test will cause the broader claims (of the basic application) to be considered "indistinct" from the narrower claims in the improvement apps. And the basic application will thus be under a hard 2/25 limit (no ESD can be filed after FAOM)... or worse, actually, since the claims in the improvement apps will count against the 5/25 limit, squeezing the claims in the basic app out eventually. And if you refile the basic app with an ESD, you lose patent term.

Posted by: niRPa at May 8, 2009 2:43 AM

"And if you refile the basic app with an ESD, you lose patent term."

...which means your penalized for developing improvements and filing improvement applications, which was the point of the Nipra quiz question.

Posted by: niRPa at May 8, 2009 2:58 AM

Gosh, please scratch my example about the FAOM before the rules (the relevant example should be filed before the rules)... Nipra question 12 explains it better than I can.

The rules are so convoluted and I was hoping they could not come back from the dead that I have pushed them into the recesses of my mind.

Thankfully, the new Director may be very, very good news (concerning the rules etc. - he understands (and appreciates) good patent work. :-)

Posted by: niRPa - rusty on the rules at May 8, 2009 3:12 AM

niPRA,

scratch or no scratch, you are making the 5/25 issue as a hard limit too complicated.

Easy alternative: Office makes ESD's required for every filing. ESD's made to be required for every application, in any response to the office, even after First Office Action on the Merits.

Thus, 5/25 becomes a red herring, too small a fish to torpedo the rules.

Posted by: Noise above Law at May 8, 2009 5:56 AM

Noise, I think you're missing the retroactivity (which creates the hard limit) that question 12 brings out (and which Prost herself indicated in the decision was not too small a fish for torpedoing). It's almost as if you need to be clairvoyant when you file an app or improve an invention under the new rules.

I am not at all against requiring searches for all applications (I would prefer a small-entity exception for that requirement, to level the playing field), and I think there can be reasonable limitations on the number of claims (I personally hate being handed a patent with 150 claims....), but those limitations should be made by people who understand the patent system and are working for its betterment (and have the well-being of the country in mind), not just working for the ease of the agency or for increasing corporate balance sheets at the price of national wealth (invention).

The problem with the ESD as promulgated in Rule 265 the PTO has admitted full well. They were unashamedly trying to place applicants in Catch-22 IC situations for the sake of the agency's own ease:

http://www.nipra.org/video2.wmv

P.S. The "one-way" torpedoing was not the main point of my comment, or even related (more than tangentially) to Hawk's post. You can have the last word....

Posted by: niRPa at May 8, 2009 6:24 AM

niRPRa,

I'll take the last word, but first, if you don't mind, one more word from you...

The 5/25 limitation was only to the invocation of ESD and not as a limitation in and of itself. If ESD's are required of all applications (including retroactively to any active application) I cannot see any way the rule torpedoing happens. Since Tafas v. Doll plainly give the Office the right to make any such "non-substantive" rule, applying ESD to all applications, where is the torpedo explosion? Egads, I think I am still in agreement with 6, so please set me straight.

Posted by: Noise above Law at May 8, 2009 8:53 AM

Nirpa, I'm pretty sure that anyone who wants to right as the rules go into effect will be given the chance to file an ESD. As a matter of fact, we were all set to send out forms for all cases on our dockets (including unexamined ones) saying so right before the injunction. I don't know what part of the rules makes you think that they would retroactively limit your old applications to 5/25, you'll get a chance to file an ESD if you'd like to. Cases that had less than 5/25 would not recieve a notice and you'd be up to your own mechanisms to decide whether or not you wanted to file an ESD before you got a FOAM. As for the few that might get caught in the crossfire at the beginning, we'd be sending out forms notifying you of the change and making you make the appropriate changes before any final or NOA after the FOAM iirc.

Posted by: 6000 at May 8, 2009 10:38 AM

"... you'll get a chance to file an ESD if you'd like to."

That is mighty kind of you 6Kovorkian, like giving me a free loaded revolver to play Russian roulette with my client's head. Obviously, we see the totality your concerns, or you didn't understand the solicitor's rationale in the video. Express Suicide Document. Thx.

Noise, there's nothing more I can say (and I feel no need or obligation to convince you otherwise), so good luck. Your premise that the court has blessed ESDs is not reflective at all of the holding - there was no reversal-in-part.

If the rules are implemented, then when your client comes to you to file an initial app with 3/20 claims, you will have a decision to make: whether or not to file an ESD (suicide) preemptively before FAOM. If you choose not to file an ESD, I hope you are clairvoyant enough to know that no improvement applications will be forthcoming, else your client will be at a hard limit of 5/25 pending (churning) claims in all his apps, and may not be able to obtain sufficient rights. If you choose to file the ESD, your malpractice insurance should cover you, but your client may end up losing all his rights. That should concern you....

Posted by: niRPa at May 8, 2009 6:00 PM

niPRa,

Give the revolver back to 6 and ask him to show you how to play the roulette game. As I've said before, the ESD isn't death for applicant's representatives, it is death for examiners.

"Your premise that the court has blessed ESDs is not reflective at all of the holding" - actually, that is EXACTLY what the holding is. The CAFC use of JEM draws the line. The vacate in part is the green light.

I can see why you might be confused, as there is a remand for further finding, so the rules, AS IS, may still be shot down. I do understand that. That is why I put in my comments that the Office will need to make the ESD's mandatory across the board (witness what 6 said was about to happen before the injunction). The Office NEEDS to do this to avoid being arbitrary or capricious. While the torpedo will be disarmed, ESD’s are not going away – and yes there may be fallout with the insurance, but less than you might imagine as the ESD will be universally required and not optional (I will not have to choose at the onset with 3/20 claims).

The ESD transcends the 5/25 gateway. In my view, it is the ESD that is the prize. Who really cares just how many claims there are if the Office merely has to connect the dots and it is the applicant that must now do the lion's share of evaluation? In fact, with universal ESD's, the argument for claim limitations withers - the "arduous task" of many claims no longer falls mainly to the office. I foresee the 5/25 being "graciously" withdrawn as a magnanimous gesture to the patent bar.

The Office has consistently shown that they cannot control the examiner corp. and get them to provide quality examinations (my apologies to the many fine examiners that CAN and DO their work well - you are only guilty be association with the likes of the game-playing 6 and the ilk that threw into the "quality" churn game). Quality is indeed the name of the game, and the only real attribute that will solve the Office's nightmare. Unfortunately, I do not believe that the Office truly understands yet what this means.

Posted by: Noise above Law at May 9, 2009 5:47 AM

The exchange between you two is hilarious. One of you thinks the sky is falling for one catagory of people, the other thinks the sky is falling for another group of people. In fact, neither group of people will feel the slightest twang of pain, much less a whole sky crashing down upon them.

"The ESD transcends the 5/25 gateway. In my view, it is the ESD that is the prize. Who really cares just how many claims there are if the Office merely has to connect the dots and it is the applicant that must now do the lion's share of evaluation? "

It's as if you cannot understand that the office must do a search and evaluation in addition to that done by the applicant. The judge even restated this for you in her opinion and yet you are incapable of understanding it.

Although, you are right that the ESD was the prize of the war.

As to quality, you're gettin' plenty. Have you not seen the numbers? ;)

Posted by: 6 at May 9, 2009 1:35 PM

you are still speaking in utter ignorance 6.

I would love to be there the day you grow up and see what blinders you have had for so long.

Then again, you may never grow up and take the blinders off and rather wallow in confusion when your particular sky crashes upon you.

"It's as if you cannot understand that the office must do a search and evaluation in addition to that done by the applicant." - keep thinking along the path that you know, stay linear. It's OK, Mommy will be here in a minute to tuck you in.

"Although, you are right..." - 'nuff said 6, even if you don't comprehend it.

Posted by: Noise above Law at May 9, 2009 4:16 PM

I wouldn't hold your breath Noise, 6 has not reached even the first stage toward enlightenment. He does not know that he does not know...

Posted by: Just sayin' at May 9, 2009 7:49 PM

"Then again, you may never grow up and take the blinders off and rather wallow in confusion when your particular sky crashes upon you."

Big words little man, they remind me of the words people spoke before KSR issued on my position on obviousness. They also remind me of the words spoken before the CAFC got ahold of the insubstantial rules, probably by you yourself. Trust me, the sky is never falling.

Except when we deregulate bankers. Then the sky falls.

You guys are more of a reason for people to not take comments on these types of blogs seriously than I am. And that's saying something.

Posted by: 6 at May 10, 2009 2:23 PM

6 is the reason the scroll button was invented...

Posted by: Just sayin' at May 10, 2009 4:56 PM