When Statute and Judicial Doctrine Collide : Doctrine Prevails

When Statute and Judicial Doctrine Collide : Doctrine Prevails

Journal article

1 online resource (pages 70-100)

In August 2023, the United States Court of Appeals for the Federal Circuit decided In re Cellect. In that case, the Federal Circuit held that the expiration date for an obviousness-type double patenting (“ODP”) rejection should be the date after—not before—any patent term adjustment (“PTA”) has been added. The court’s holding is self-prophesizing because it assumes—without evidence—that Congress adopted a statute to support a doctrine the court, itself, created. The original statutory basis for the court’s decision was adopted by Congress before the court adopted the judicial doctrine of ODP. Neither the Supreme Court, nor Congress, has since endorsed the doctrine. Further, the court’s decision causes the bizarre consequence that delays caused by the United States Patent and Trademark Office can result in the rejection of otherwise valid patents. This note considers the development of ODP, explores the court’s opinion in In re Cellect, critiques its conclusion, and proposes that the expiration date for an ODP rejection should be based on the expiration date before any PTA is added.

Crossref

John Marshal Review of Intellectual Property Law, Volume 24, Issue 1, 2024, page 70-100

John Marshal Review of Intellectual Property Law

[Chicago, Illinois] : UIC Review of Intellectual Property Law, 2024.

eng

https://repository.law.uic.edu/cgi/viewcontent.cgi?article=1528&context=ripl

External Online Journals > The John Marshall Review of Intellectual Property Law