Foley Hoag Tells Supreme Court That Congressional Guarantees For Patents Are Being Negated By Courts

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Foley Hoag LLP attorneys, on behalf of the New York Intellectual Property Association (NYIPLA), filed an amicus curiae brief at the U.S. Supreme Court in Cellect, LLC v. Katherine Vidal...
United States Intellectual Property
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Foley Hoag LLP attorneys, on behalf of the New York Intellectual Property Association (NYIPLA), filed an amicus curiae brief at the U.S. Supreme Court in Cellect, LLC v. Katherine Vidal, urging the Court grant certiorari to review In re Cellect. That case concerns the judicially-created doctrine of non-statutory obvious-type double patenting (ODP), which the US Patent & Trademark Office ("PTO") used to invalidate patents solely based upon the PTO having failed timely examine the underlying applications. That failure to timely examine applications led to some patents receiving an automatic, mandatory Patent Term Adjustment ("PTA") of expiration dates; the PTO used those adjustments to hold the patent invalid for ODP.

For much of US patent law history, patent expiration was based upon the date a patent issued. Congress changed that provision as part of the 1994 Uruguay Round Agreements Act and now patents expire 20 years from the earliest priority application – no matter how many patents derive from that priority application. The only reason a patent might expire more than 20 years from priority is if there is a delay at the PTO (or sometimes other specified regulatory agencies), in which case the term is extended to account for the government's delay. This means that where some patents from a common priority application are unduly delayed but others are not, those patents will expire on different days – that is the PTA framework Congress created as a guarantee that the PTO will conduct timely examination of applications instead of allowing those undue delays to squander the time a patent protects an invention. As today's NYIPLA brief tells the Supreme Court: the Federal Circuit's decision "not only makes those guarantees worthless; it makes PTA a risk to patent validity."

In its NYIPLA brief, Foley Hoag also told the Supreme Court that in light of these Congressional actions ODP "is a solution in search of a problem" such that "it is time to retire ODP." While the brief takes no position on the underlying merits of the dispute and ultimately has no position on whether the patents are valid, it did argue that as a Constitutional matter Congress – and not the courts – establishes how long a patent lasts and how that term is computed.

The background of the case is that in August 2023, the Federal Circuit affirmed a decision by the PTO's Patent Trial and Appeal Board (PTAB) holding that PTA is computed based upon when patents expire after PTA is taken into account. This is different than how the Federal Circuit treated another Congressional guarantee—called patent term extension (PTE)—that adds back patent term based upon the time it takes for the US Food & Drug Administration to approve a patented, medical product. The Federal Circuit previously ruled that ODP is evaluated based upon patent dates before PTE is applied.

In November 2023, Cellect asked the Federal Circuit for en banc rehearing in the matter, and Foley Hoag filed a brief on behalf of NYIPLA supporting that petition. The Federal Circuit denied rehearing. Cellect's recent Supreme Court Petition cites to Foley Hoag's NYIPLA brief for en banc rehearing.

NYIPLA's brief today argued that the Federal Circuit's In re Cellect decision is a significant detriment to patent owners—including small businesses and individual owners—and will stifle innovation, and includes an example of research that was abandoned because of ODP concerns. Indeed, in the wake of Cellect, companies are likely to abandon strategies of seeking patent protection and then subsequently filing continuations to cover additional and new aspects in fear of that subsequent invention invalidating prior patents.

The Foley Hoag attorneys who represented NYIPLA are Jeffrey I. D. Lewis (Counsel of Record), Lucas Watkins, David Surry and Brittany Saunders. NYIPLA is also represented by Robert Rando of Greenspoon Marder LLP, Charles Macedo, Gary Gershik, and David Goldberg of Amster Rothstein & Ebenstein LLP, and Paul Coletti of Johnson & Johnson.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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