Problems That May Arise When Inventor Changes Employment: Obviousness-type Double Patenting

| March 13, 2013

In Re Jeffery Hubbell

March 7, 2013

Panel:  Newman, O’Malley and Wallach.  Opinion by O’Malley.  Dissent by Newman.


Most patent practitioners would not be worried about an issued patent having a much later filing date than the application they are prosecuting. However, this case illustrates that such a patent can ultimately bar their application from issuing due to the doctrine of obviousness-type double patenting.


Hubbell is an inventor of U.S. Application 10/650,509 (the ‘509 application). Hubbell appeals from the decision of the Board of Patent Appeals and Interferences affirming the Examiner’s final rejection based on obviousness-type double patenting over U.S. Patent No. 7,601,685 (the ‘685 patent), which names Hubbell as an inventor. The ‘509 application was filed  on August 27, 2003, but claims benefit of a provisional application filed in 1997 when Hubbell was a professor at CalTech. Thus, the ‘509 application is assigned to CalTech.

Hubbell left CalTech and joined the faculty at Eidgenossische Technische Hochschule Zurich (“ETHZ”) in 1998. The application which issued as the ‘685 patent was filed on December 17, 2002 and is jointly assigned to ETHZ and Universitat Zurich. It is undisputed that the ‘509 application and the ‘685 patent do not have identical inventive entities and have neither common owners nor common assignees. It is also undisputed that  the ‘685 patent is not available as prior art under 35 USC 102 or 103. The Examiner found that the claims of the ‘685 patent “are a species of the instantly claimed invention and thus anticipate the claimed invention,” in making the rejection under the doctrine of obviousness-type double patenting.

Decision Analysis

Obviousness-type double patenting is a judicially created doctrine designed to “prevent claims in separate applications or patents that do not recite the ‘same’ invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1373 (Fed. Cir. 2005) (citation omitted). There are two justifications for obviousness-type double patenting. The first is “to prevent unjustified timewise extension of the right to exclude granted by a patent no matter how the extension is brought about.” In re Van Ornum, 686 F.2d 937 (CCPA 1982) at 943-44 (quotation and citation omitted). The second rationale is to prevent multiple infringement suits by different assignees asserting essentially the same patented invention. In re Fallaux, 564 F.3d 1313 (Fed. Cir. 2009) at 1319 (recognizing that “harassment by multiple assignees” provides “a second justification for obviousness- type double patenting”); see also Chisum on Patents § 9.04[2][b][ii] (“The possibility of multiple suits against an infringer by assignees of related patents has long been recognized as one of the concerns behind the doctrine of double patenting.”).

Hubbell’s position is that obviousness-type double patenting should not apply where an application and a conflicting claim share common inventors but do not have identical inventive entities, were never commonly owned, and are not subject to a joint research agreement. The Director argues that: (1) whether the application and patent were ever commonly owned is immaterial to the policy of preventing harassment by multiple assignees; (2) identity of inventors is not required where there is an overlap in the inventors; (3) Hubbell has not established any grounds upon which he should be allowed to file a terminal disclaimer; and (4) Hubbell is not entitled to a two-way obviousness analysis because he admitted that he partially is responsible for the delay that caused the ’685 patent claims to issue first. The CAFC agrees with the Director’s position on each point.

With respect to the Director’s points (1) and (2), the CAFC emphasizes the MPEP stating that obviousness-type double patenting may exist between a patent and an application filed by “the same inventive entity, or by a different inventive entity having a common inventor, and/or by a common assignee/owner.” MPEP § 804(I)(A) (emphasis added).

With respect to point (3), Hubbell argues that he should be entitled to file a terminal disclaimer if obviousness-double patenting applies. However, since there is no common ownership, this argument fails.

With respect to point (4), the CAFC points out  that the two-way test is appropriate only in the “unusual circumstance” where “the PTO is solely responsible for the delay in causing the second-filed application to issue prior to the first.” Since Hubbell was partially responsible for the delay because of prosecution choices that resulted in the ‘685 patent to issue first, then the two-way analysis does not apply.

Newman’s Dissent

Judge Newman believes the finding of double patenting when there is neither common inventorship nor common ownership to be contrary to statute and precedent, stating: The law of double patenting evolved in various factual situations, but never departed from the requirement of either common inventorship or common ownership, and never departed from the available remedy of terminal disclaimer for obviousness-type double patenting. This remedy draws on the 1952 codification that any patentee or applicant may “disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted,” 35 U.S.C. §253. As explained by P.J. Federico, Examiner-in-Chief of the United States Patent Office and a draftsman of the 1952 Act: No specific reason for this provision appears in the printed record, but its proponents contemplated that it might be effective in some instances, in combating a defense of double patenting, to permit the patentee to cut back the term of a later issued patent so as to expire at the same time as the earlier issued patent and thus eliminate any charge of extension of monopoly. 35 U.S.C.A. 1, 49 (1954), reprinted at 75 J. Pat. & Trademark Off. Soc’y 161 (1993).

Practice Tips

Companies must be aware of their employee’s inventions before, during and after employment. As illustrated in this case, an ex-employee’s later species invention could bar a much earlier-filed genus invention. Furthermore, prosecution delays on the applicant’s side are likely to prevent the two-way obviousness analysis.

Full Opinion

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