Obviousness-Type Double Patenting: Who Would Have Thought It Would Have Such a Profound Effect on the Pharmaceutical Industry?

Vol. 5 No. 1

By

Anthony M. Insogna is co-chair of the intellectual property practice at Jones Day and is a partner in their San Diego office. He represents clients in intellectual property matters including patent litigation, patent interferences, oppositions, patent portfolio creation and management, strategic counseling, technology transactions, and due diligence. He can be reached at aminsogna@jonesday.com. Julie M. Baher is a patent attorney in New York City, whose practice has encompassed patent litigation, patent prosecution, interferences, and due diligence, primarily in the fields of pharmaceuticals, biotechnology, and medical devices. She can be reached at julie.baher@gmail.com. Colin A. Forestal is an associate at the New York City office of Jones Day. His practice encompasses the procurement of United States and international patent applications in the pharmaceutical and biotechnology fields as well as participation in patent due diligence and freedom-to-operate investigations across various technologies. He can be reached at caforestal@jonesday.com.

Whether litigating or prosecuting pharmaceutical patents, it has become increasingly clear that all patent practitioners must be cognizant of the recent developments in the law of obviousness-type patenting, and their potentially dramatic effects on the pharmaceutical industry. For prosecutors, no longer is it quite as simple to “expand the picket fence” and file multiple patent applications—related or unrelated—to cover various aspects of a client’s inventions. For litigators, the obviousness-type double patenting defense has taken on entirely new life, and can lead to a finding of invalidity or the necessity to terminally disclaim and cut short a patent with valuable term remaining. Depending on which side one represents, the application of obviousness-type double patenting can be either extremely beneficial or extremely damaging.

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