David Barr published “Navigating Patent Term Adjustment and Double Patenting After In re Cellect” in Thomson Reuters Practical Law. Practical Law is Thomson Reuters’ subscription-only collection of expert-written how-to guides, Q&A guides, forms, templates, checklists, and more across all major practice areas.
This article discusses the decision by the U.S. Court of Appeals for the Federal Circuit on August 28, 2023 (In re Cellect), which held that patents awarded Patent Term Adjustment (PTA) under 35 U.S.C. § 154(b) can be invalidated under the doctrine of obviousness double patenting (ODP) based on earlier-expiring patents in the same family. It discusses the uncertainty created by two district court decisions that interpreted Cellect differently, the Federal Circuit's effort to clarify Cellect in its decision on August 13, 2024 (Allergan USA, Inc. v. MSN Laboratories Private Ltd.), and Cellect LLC's petition to the Supreme Court for a writ of certiorari. The article includes background on PTA, ODP, and practice considerations and tactics for patent applicants and owners seeking to navigate the issues created by these decisions.