Michael D Brown / Shutterstock.com
The effect of obviousness-type double patenting on patent term extension and patent term adjustment in the biotech and pharma industry needs careful consideration, as Gaby L. Longsworth and Eric K. Steffe report.
A blockbuster drug can generate revenues of more than $5 billion per year. Each day that a patent encompassing such a drug prevents a competitor from entering the market translates into millions of dollars for a company. Patent term extension (PTE) and patent term adjustment (PTA) can significantly lengthen the term of patents. However, without careful prosecution, patent term can be lost due to the doctrine of obviousness-type double patenting (ODP). Provided below is a discussion of the interplay of ODP, PTA and PTE and the impact on drafting and prosecuting patent applications.
Obviousness-type double patenting
The doctrine of ODP was judicially created to prevent the issuance of claims in a second patent that are not ‘patentably distinct’ from the claims of a first patent. According to the doctrine, a patent owner should not be able to obtain a second patent with a longer patent term claiming the same or similar invention as an earlier patent. In addition, ODP arose to prevent multiple lawsuits by different patent owners based on essentially the same invention.
To continue reading this article and to access our full archive, digital magazines and special reports you will need a subscription.
Start a subscription today to access the LSIPR website
If you have already subscribed please login.
For multi-user price options, or to check if your company has an existing subscription we can add you into, please email Atif at achoudhury@newtonmedia.co.uk
If you have any technical issues please email tech support.
For access to the complete website and archive choose '12 MONTH SUBSCRIPTION'. For a free, two-week trial select ‘TWO WEEK FREE TRIAL’.
obviousness, double patenting, USPTO, patent term extension
