Invalidating an issued patent
The Court acknowledged that no such gamesmanship was present here because the ’772 patent expired “after the ’990 patent only due to happenstance of an intervening change in patent term law.” The ’990 patent had not issued when the ’772 patent issued, and the ’772 patent “was confined to a 17-year patent term.” The Court also distinguished the case , 764 F.3d 1366 (Fed. 2014), on similar grounds, recognizing that the case also involved two post-URAA patents.Finally, the Court held that “where we have an earlier-filed, earlier-issued, pre-URAA patent that expires after the later-filed, later-issued, post-URAA patent,” the Court will “apply our traditional, pre-URAA obviousness-type double patenting practice.” It should be noted, however, that the Court highlighted in a footnote that other hybrid situations may exist, and the current opinion is limited to the specific facts of the case.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.
Although the ’772 patent also received a five-year term extension, the term extension did not affect the holding of the case.
The ’990 patent was filed on May 23, 1997, well after the effective date of the URAA.
The term of the ’990 patent extended 20 years from the effective filing date of September 24, 1993, or until September 24, 2013.
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