OTDP and Patent Terms: The Interplay Between Obviousness-Type Double Patenting, Pattern Terms Extension and Patent Term Adjustment Post-Ex Parte Cellect

September 22, 2022 3:15pm

Jeremy Lowe
Shareholder
Leydig, Voit & Mayer, Ltd.

Kevin E. Noonan
Partner
McDonnell Boehnen Hulbert & Berghoff LLP

Steven J. Horowitz
Partner
Sidley Austin LLP

In Ex Parte Cellect, the PTAB considered the appropriateness of an OTDP rejection of two related patents that had different expiration dates due to PTA. The patent whose term had been extended was found invalid – sending shivers down the spine of patent owners everywhere. With a contradictory decision delivered by the CAFC, practitioners are left with two opposing schools of thought. The present case will either expand or contract the Gilead precedent on this issue of first impression, and consider whether the doctrine is statutory or equitable.