{"id":2284,"date":"2018-12-07T12:33:05","date_gmt":"2018-12-07T17:33:05","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2284"},"modified":"2018-12-08T11:45:47","modified_gmt":"2018-12-08T16:45:47","slug":"normal-double-patenting-rules-dont-apply-when-the-patents-straddle-the-uraa","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2284","title":{"rendered":"Normal Double Patenting Rules Don’t Apply When the Patents Straddle the URAA"},"content":{"rendered":"\n

In Novaritis Pharmaceuticals Corporation v. Breckenridge Pharmaceutical Inc.<\/a>, [2017-2173, 2017-2175, 2017-2176, 2017-2178, 2017-2179,\u00a02017-2180, 2017-2182, 2017-2183, 2017-2184] (December 7, 2018), the Federal Circuit reversed the district court, determining that the law of obviousness-type double patenting does not require a\u00a0patent owner to cut down the earlier-filed, but later\u00a0expiring, patent\u2019s statutorily-granted 17-year term so that\u00a0it expires at the same time as the later-filed, but earlier expiring\u00a0patent, whose patent term is governed under an\u00a0intervening statutory scheme of 20 years from that patent\u2019s\u00a0earliest effective filing date.<\/p>\n\n\n\n

Applying  Gilead Sciences, Inc. v. Natco Pharma Ltd.<\/em>, which held that a later-filed but earlier-expiring patent can serve as a double patenting reference for an earlier-filed but later-expiring patent, the district court found U.S. Patent No. 6,440,990 to be a proper double patenting reference for the earlier filed U.S. Patent No. 5,665,772, which had a longer term because of a change in the statutory term.<\/p>\n\n\n\n

The Federal Circuit said that Gilead<\/em> addressed a question that was not applicable in the present case — in Gilead<\/em>, the Federal Circuit concluded that, where both patents are post- URAA, a patent that issues after but expires before another patent can qualify as a double patenting reference
against the earlier-issuing, but later-expiring patent.  In contrast, in the present case Novartis owns one pre-URAA patent (the \u2019772 patent) and one post-URAA patent (the \u2019990 patent), and the 17-year term granted to the \u2019772 patent does not pose the unjustified time extension problem that was the case for the invalidated patent in Gilead<\/em>.<\/p>\n\n\n\n


[T]he present facts do not give rise to similar patent\u00a0prosecution gamesmanship because the \u2019772 patent\u00a0expires after the \u2019990 patent only due to happenstance of\u00a0an intervening change in patent term law. Both the \u2019772\u00a0and the \u2019990 patents share the same effective filing date of
September 24, 1993. If they had been both pre-URAA\u00a0patents, the \u2019990 patent would have expired on the same\u00a0day as the \u2019772 patent by operation of the terminal disclaimer\u00a0Novartis filed on the \u2019990 patent, tying its expiration\u00a0date to that of the \u2019772 patent. And if they had been
both post-URAA patents, then they would have also both\u00a0expired on the same day. Thus, the current situation does\u00a0not raise any of the problems identified in our prior\u00a0obviousness-type double patenting cases. At the time the\u00a0\u2019772 patent issued, it cannot be said that Novartis improperly
captured unjustified patent term. The \u2019990\u00a0patent had not yet issued, and the \u2019772 patent, as a pre-URAA patent, was confined to a 17-year patent term.<\/p><\/blockquote>\n\n\n\n

The Federal Circuit concluded that in this particular situation where we have an earlier filed,\u00a0earlier-issued, pre-URAA patent that expires after
the later-filed, later-issued, post-URAA patent due to a\u00a0change in statutory patent term law, it would not invalidate\u00a0the challenged pre-URAA patent by finding the post-URAA patent to be a proper obviousness-type double
patenting reference.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Novaritis Pharmaceuticals Corporation v. Breckenridge Pharmaceutical Inc., [2017-2173, 2017-2175, 2017-2176, 2017-2178, 2017-2179,\u00a02017-2180, 2017-2182, 2017-2183, 2017-2184] (December 7, 2018), the Federal Circuit reversed the district court, determining that the law of obviousness-type double patenting does not require a\u00a0patent owner to … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[75,1],"tags":[],"class_list":["post-2284","post","type-post","status-publish","format-standard","hentry","category-double-patenting","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2284","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2284"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2284\/revisions"}],"predecessor-version":[{"id":2288,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2284\/revisions\/2288"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2284"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2284"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2284"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}