When the Innovation Act first was introduced, I was skeptical of the proposed obviousness-type double patenting statute. I did not understand why some thought that patents that fall under the First-Inventor-To-File provisions of the American Invents Act would not be subject to the existing judicially-created doctrine of obviousness-type double patenting, and I thought that the proposed statute was both too broad and too narrow if it was intended to codify existing OTDP jurisprudence for First-Inventor-To-File patents. Now that the Innovation Act has been reintroduced, I am taking a second look at the proposed statute, particularly in view of the recent Federal Circuit decisions that expanded (or misapplied) the judicially-created doctrine.

The Proposed Obviousness-Type Double Patenting Statute

The Innovation Act (now H.R. 9) would create 35 USC § 106 as a new statutory provision for obviousness-type double patenting:

106. Prior art in cases of double patenting.

A claimed invention of a patent issued under section 151 (referred to as the ‘first patent’) that is not prior art to a claimed invention of another patent (referred to as the ‘second patent’) shall be considered prior art to the claimed invention of the second patent for the purpose of determining the nonobviousness of the claimed invention of the second patent under section 103 if—
(1) the claimed invention of the first patent was effectively filed under section 102(d) on or before the effective filing date of the claimed invention of the second patent;
(2) either—
(A) the first patent and second patent name the same individual or individuals as the inventor; or
(B) the claimed invention of the first patent would constitute prior art to the claimed invention of the second patent under section 102(a)(2) if an exception under section 102(b)(2) were deemed to be inapplicable and the claimed invention of the first patent was, or were deemed to be, effectively filed under section 102(d) before the effective filing date of the claimed invention of the second patent; and
(3) the patentee of the second patent has not disclaimed the rights to enforce the second patent independently from, and beyond the statutory term of, the first patent.

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 (4) EXCLUSIVE RULE.—A patent subject to section 106 of title 35, United States Code, as added by paragraph (1), shall not be held invalid on any nonstatutory, double-patenting ground based on a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act (35 U.S.C. 100 note).

(5) EFFECTIVE DATE.—The amendments made by this subsection shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to a patent or patent application only if both the first and second patents described in section 106 of title 35, United States Code, as added by paragraph (1), are patents or patent applications that are described in section 3(n)(1) of the Leahy-Smith America Invents Act (35 U.S.C. 100 note).

Key Points About OTDP Under the Innovation Act

According to its legislative history, the basic purpose of the statute is to provide that the claims of a first patent can qualify as prior art under § 103 against claims of a second patent with a common inventor or common owner and an effective filing date on or after that of the first patent. Parsing through the statutory language, I note these differences vis-à-vis the judicially-created doctrine (“non-statutory OTDP”):

• Te statute would apply only when the first patent does not otherwise qualify as prior art against the second patent, e.g., when the first patent was not published before the effective filing date of the second patent.  This is in contrast to non-statutory OTDP, where a patent can qualify as a prior art reference and its granted claims can be used in an OTDP rejection.

• Only a patent with the same or earlier effective filing date could be used to make a rejection under the statute. This is in contrast to non-statutory OTDP, where the claims of a later-filed patent can be used in an OTDP rejection.

• By invoking § 103, OTDP would be evaluated under a Graham/KSR analysis, rather than the common law “patentably indistinct” analysis, and may abrogate the applicability of In re Clayand Takeda v. Doll to OTDP cases.

• By invoking § 103, the statute would make OTDP an issue that could be raised in an Inter Partes review proceeding.

• The statute may permit the use of a Terminal Disclaimer to avoid OTDP without requiring the patents to be commonly owned, as long as the owner of the second patent disclaims “the rights to enforce the second patent independently from, and beyond the statutory term of, the first patent.”

• A patent subject to the new statute would not be subject to non-statutory OTDP rejections based on First-Inventor-To-File patents, but presumably could be subject to such rejections based on First-To-Invent patents.

What’s Not to Like About Section 106?

While many of the points highlighted above are more favorable to patent owners than the judicially-created doctrine, there are still a few aspects of proposed new § 106 that raise concerns.

Interplay Between § 106 and § 102(a)(2)

In order to provide for OTDP between patents based on common ownership, § 106(2)(B) invokes§ 102(a)(2), but § 102(a)(2) relates to more than just common ownership.  Indeed, common ownership is governed by § 102(a)(2)(C). The other portions of § 102(a)(2) relate to disclosures in earlier-filed application that were obtained from the inventor (§ 102(a)(2)(A)) or that do not qualify as prior art because of an earlier public disclosure or derived from by the inventor (§ 102(a)(2)(B)).

By invoking § 102(a)(2)(A), does § 106 permit an earlier filed application by A that claims subject matter obtained from B to be cited against B’s application in an OTDP rejection?

Limited Effective Date

I still do not understand why some thought that First-Inventor-To-File patents would not be subject to judicially-created OTDP, so I do not understand why proposed new § 106 should only apply to First-Inventor-To-File patents. I also do not understand why the new statute only should apply where both the first and the second patents are First-Inventor-To-File patents, and why the exclusivity of the new statute only should apply for OTDP based First-Inventor-To-File patents.

It is my understanding that the Innovation Act may garner bipartisan support and make its way through Congress. I hope others take a second look at proposed new § 106 and address these issues before it becomes law.