For centuries, alchemists attempted to transform base metals such as lead into gold. Their success against the laws of nature laid out of their reach, but one has to admire the creativity and determination of their efforts. After all, the potential rewards for success would have been enormous. The same is true for the U.S. Divisional application, which carries a unique and potent protection known as the "safe harbor" provision under 35 U.S.C. § 121. The true divisional application is therefore noble, like gold, in that it has special and valuable properties. The true divisional is immune from having its parent used as a reference against it, which notably could occur in an obviousness-type double-patenting (OTDP) rejection. In this article, Finnegan attorneys Eric P. Raciti and Clara N. Jimenez discuss how the "safe harbor" provision under 35 U.S.C. § 121 applies to the G.D. Searle LLC v. Lupin Pharmaceuticals, Inc. case and what applicants need to do to benefit from this provision.

Previously published in AIPLA Chemical Practice Chronicles Newsletter

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