Reevaluating Patent Term Policies as Supreme Court In re Cellect Petition Looms

The Federal Circuit’s In re Cellect decision has turned the question of patent term extension into a hot issue. It is the subject of a pending certiorari petition before the Supreme Court.

Writing for Patent Docs, Kevin E. Noonan references the commentary the decision has elicited, and the many proposals afloat to avoid its consequences. These include modifying patent prosecution strategies and filing prospective terminal disclaimers.

Noonan calls such reactions understandable but counsels a simpler approach: a proper understanding and resulting application of the patent term adjustment statute.

The law regarding obviousness-type double patenting is that it shall not cut short the patent term adjustment of a parent patent over a child patent if the child is still pending when the parent is granted.

Noonan provides an analysis that challenges the Federal Circuit’s decision, based on the fact that “a pending child application does not have a ‘specified’ expiration date as required by the statutory language.”

He said that a pending application cannot have a specified expiration date if it is still being prosecuted because the expiration date might change due to events arising during the prosecution. In practice, the United States Patent and Trademark Office (USPTO) has never specified, or attempted to specify, the expiration date of a pending patent application, he said.

He said that this interpretation is supported by the legislative history of the many times Congress considered obviousness-type double patenting in the context of patent term adjustment. “In 1999, Congress changed the patent term adjustment (PTA) provisions to the current language by enacting the Patent Term Guarantee Act of 1999 to ‘guarantee’ a diligent applicant a minimum 17-year effective patent term,” Noonan wrote.

Because of this clear legislative intent, and other analysis of the text, history, and structure of governing patent statutes, Noonan argued that the U.S. Supreme Court will almost certainly rule that “the Federal Circuit has once again erred in interpreting U.S. patent law,” and needs the Court’s correction.