Obviousness-type Double-patenting in Patent Family Hacked between Multiple Entities

The Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences (Board) that the conflicting claims between U.S. Patent Application No. 10/618526 (the Fallaux application) and U.S. Patent No. 6340595 and U.S. Patent No. 6413776 (the Vogel patents) are not entitled to the two-way test for obviousness-type double-patenting. See, In re Fallaux, Fed. Cir. No. 2008-1545, May 6, 2009. The examiner had rejected several claims in the Fallaux application in view of claims in the Vogel patents using the one-way test for obviousness-type double-patenting. Under the two-way test, the Fallaux claims would not have been subject to obviousness-type double-patenting.

Double-patenting can arise when there are conflicting claims (i) between an issued patent and one or more applications, (ii) between co-pending applications, and (iii) between one or more applications and a published application. Category (i) applies in the Fallaux case. For category (i), obviousness-type double-patenting may arise if any of the following is true:

(a) the application and patent are commonly owned;

(b) the application and patent have the same inventive entity; or

In the Fallaux case, the Vogel patents and the Fallaux application claim priority to the same application, but the Fallaux application and Vogel patents had been assigned to different entities.

Determination of obviousness-type double-patenting between an application and a patent can be one-way or two-way. In the one-way test, the examiner asks whether the application claims are obvious over the patent claims. In the two-way test, the examiner asks whether the application claims are obvious over the patent claims and whether the patent claims are obvious over the application claims. In the two-way test, if either one of the inquiries does not compel a conclusion of obviousness, the obviousness-type double-patenting rejection is not made. The two-way test is applicable if the following conditions are met:

(1) the applicant could not have avoided separate filings for the application claims and patent claims; and

(2) the patent office controlled the rates of prosecution to cause the later-filed application (improvement application) to issue prior to the first-filed application (basic application).

The Fallaux application and Vogel patents did not meet either of the conditions for the two-way test. There was substantial discussion in the opinion rendered by the Federal Circuit on whether or not the PTO was at fault for the delay that caused the Vogel patents to issue before the Fallaux application. However, this discussion should not have occurred at all since the Fallaux application was filed after the Vogel patents were issued, making moot the notion of nefarious intent on the part of the patent office to manipulate rates of prosecution. The Court showed that Dr. Fallaux had control over the prosecution rates of the Fallaux application and Vogel patents, but the Court also clarified that whether Dr. Fallaux controlled or did not control the prosecution rates is not germane to the question of whether the two-way test should or should not apply.