The recent ARP (Appeal Review Panel) decision in ex Parte Baurin reversed a PTAB decision reversing the examiner’s final rejection of application 17/135,529 (‘529) on the grounds of obvious type double patenting (OTDP). The examiner’s OTDP rejection relied solely on the concept of harassment if the ownership of a patent issuing on ‘529 was different from for the reference patents. The examiner rejected the ‘529 application over five patents and one pending application (a patent thicket) on OTDP even though there was no extension of the monopoly period of the references relying on the M.P.E.P. and PTO guidance documents for the concept of harassment as the sole basis for the rejection. The PTAB rebutted these arguments in its decision denying the examiner’s request for reconsideration. The PTAB did not find any case law supporting the concept that the possibility of dual ownership alone was sufficient to support a double patent infringement rejection but did cite Gilead Sciences, Inc. v. Natco Pharma Ltd, 753 F.3d 1208 at 214 (Fed. Cir. 2014) where the Court found that a later filed and earlier expiring patent made the earlier filed and later expiring patent invalid for double patenting:
it is a bedrock principle of our patent system that when a patent expires, the public is free to use not only the same invention claimed in the expired patent but also obvious or patentably indistinct modifications of that invention. See discussion supra.
. . .
And that principle is violated when a patent expires and the public is nevertheless barred from practicing obvious modifications of the invention claimed in that patent because the inventor holds another later-expiring patent with claims for obvious modifications of the invention (emphasis added).
The PTAB offered no guidance for the examiner’s action subsequent to the decision. The problem was that unlike the court in Gilead, the PTO had no jurisdiction over the issued patents which extend the statutory period of the patent issuing on the ‘529 patent.
The ARP decided that the PTAB was incorrect but was silent with respect to Gilead. Instead, the ARP ignored the citation and decided to go rogue. The ARP agreed with the PTAB that the ‘529 patent would expire on March 28, 2032, while the reference patents expired in 2037, and thus no unlawful extension of the reference patents was present. The ARP relied upon the possibility of harassment if ownership of the patent issuing from the ‘529 patent and the reference patents was to become different; a possibility that never occurred during the 19 years between the enactment of the use of terminal disclaimers in 1952 and patent office rule requiring the statement against the alienation of ownership in 1971 which resolved the theoretical problem of split ownership. In all three of the decisions cited by the ARP, the Federal Circuit’s discussion of harassment was in dicta since the application claims were also found to be an impermissible extension of the reference patents’ exclusivity period. Further, in two of the decisions terminal disclaimers were filed but rejected because of a lack of common ownership and in the third, Cellect, the applicant, offered a statement of not alienating ownership which was considered insufficient to the required disclaimer. The ARP ignored the fact that the USPTO does not have substantive rulemaking authority in patent prosecution matters and using 37 CFR 1.321(b) in such a substantive manner is improper. The ARP found itself bound by dicta when it noted that:
Were the Office not bound by the Federal Circuit's precedents applying the OTDP anti-harassment rationale, this ARP would clarify that the risk of separate ownership and hypothetical harassment generally should not form a standalone basis for OTDP rejections during examination.
The ARP cited no Federal Circuit decisions applying harassment as the sole basis for double patenting. The cited cases simply cite harassment as a second reason in cases where the unlawful patent term extension existed. The ARP ignored the decision In re Jentoft, 55 CCPA 1026, 392 F.2d 633, 641 (1968) where the Court stated it had previously rejected the harassment as a basis for double patenting:
In Robeson [In re Robeson, 331 F.2d 610] the opinion refers to possible harassment through divided ownership, mentioning "multiple assignees." The implication is that if ownership remains in the same person, by original issue or assignment, the problem does not exist. Yet the board expands it to include "appellant, his assignee, or different assignees." The argument has always been predicated on divided ownership of overlapping patents. When there is common ownership, we think harassment by multiple suits is most unlikely. We are further of the belief that a person or corporation obtaining patents on inventions so closely related that they can give rise to double patenting rejections is most unlikely to divide the ownership of them. Though the Robeson opinion says that we do not "minimize" the possibility, inter alia, of harassment by "multiple assignees," upon further reflection there does not appear to us to be much to minimize on this score. In any event, it should be remembered that we refused, in Robeson, to accept the harassment argument.
Sanofi has appealed this decision to the Federal Circuit which, if successful, will put its patent thicket at risk under Gilead since any patent issuing from the ‘529 application would invalidate the later expiring patents, and since the claims of the patent could not be practiced until the expiration of the earlier issued patents. Companies creating patent thickets should consider this possibility under Gilead.
As for the USPTO, its only course of action is to initiate IPRs against the later expiring patents which Sanofi has admitted are not patentably distinct when the ‘529 application patent issues. It would be wise for Sanofi to abandon the appeal to preserve its thicket.
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