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Challenges to Obviousness Type Double Patenting
Contains material from May 2023
Challenges to Obviousness Type Double Patenting
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Obviousness‑type double patenting is a judicial creation designed to preclude improper time extension of patent rights by proscribing the issuance of claims in a second patent that are directed to subject matter that is “different but not patentably distinct from the subject matter claimed in the prior patent.” But there must be some clear evidence to establish why the invention's variation in the second patent or application would have been obvious. This presentation discusses responding to OTDP rejections, as well as the implications when the patent in question has PTE or PTA.
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Challenges to Obviousness Type Double Patenting, Including patents with PTE or PTA (May 2023)
Kakoli Caprihan, Tom Irving
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Session 1 —46 mins
Challenges to Obviousness Type Double Patenting, Including patents with PTE or PTA (May 2023)
Obviousness‑type double patenting is a judicial creation designed to preclude improper time extension of patent rights by proscribing the issuance of claims in a second patent that are directed to subject matter that is “different but not patentably distinct from the subject matter claimed in the prior patent.” But there must be some clear evidence to establish why the invention's variation in the second patent or application would have been obvious. This presentation discusses responding to OTDP rejections, as well as the implications when the patent in question has PTE or PTA.
Originally presented: Mar 2023 Advanced Patent Law Institute
Kakoli Caprihan,
U.S. Patent and Trademark Office, Office of the General Counsel - Alexandria, VA
Tom Irving,
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Washington, DC