Retroactive Terminal Disclaimer Not Effective to Avoid Obviousness-Type Double Patenting.
“[A] patentee may file a disclaimer after issuance of the challenged patent or during litigation, even after a finding that the challenged patent is invalid for obviousness-type double patenting.” (p. 10.) But a patentee cannot file a disclaimer after the earlier patent has expired. “The patentee cannot undo this unjustified timewise extension by retroactively disclaiming the term of the later patent because it has already enjoyed rights that it seeks to disclaim. Permitting such a retroactive terminal disclaimer would be inconsistent with ‘[t]he fundamental reason’ for obviousness-type double patenting, namely, to prevent unjustified timewise extension of the right to exclude. We therefore hold that a terminal disclaimer filed after the expiration of the earlier patent over which claims have been found obvious cannot cure obviousness-type double patenting.” (p. 12.)
Safe Harbor Provision Applies to All Subsequent Divisionals Provided the Examiner’s Original Demarcation of Independent Inventions Is Not Crossed. “[T]he safe-harbor provision may apply to a divisional of a divisional of the application in which a restriction requirement was entered. We note that this holding is fully consistent with the purpose of § 121—namely, to prevent a patentee who divides an application in which a restriction requirement has been made from risking invalidity due to double patenting.” (p. 20.) Upon the restriction requirement, the applicant had to file one or more divisional applications if it wanted to get a patent on the non-elected subject matter. The applicant “did so not by filing separate divisional applications on each of the inventions grouped by the examiner in the restriction requirement, but instead, by filing two successive divisionals to different combinations of the inventions identified in the restriction requirement. In doing so, [the applicant] neither violated the examiner’s restriction requirement nor risked loss of the safe harbor of § 121.” (p. 22.)
The full opinion, which includes a dissent, is here.