Federal Circuit clarifies double patenting test

The doctrine of double patenting is intended to prevent the unjustified extension of patent exclusivity beyond the term of a patent. The two-way test for double patenting can prove more favorable to a patent applicant than the one-way test. But, in the recent case of In re Fallaux, the U.S. Court of Appeals for the Federal Circuit ruled that the two-way test is appropriate only in limited circumstances.

All in the family

The case involved a family of patents, including the “Fallaux application.” The first application in the family was filed March 25, 1997, and issued as a patent on Nov. 30, 1999. After four continuing applications resulted in three patents, the Fallaux application was filed July 11, 2003.

The Fallaux application shared a common inventor with two existing patents (the Vogels patents) that issued before the filing of the Fallaux application, thereby triggering the double patenting doctrine. The patent examiner rejected the claims in the application due to obviousness-type double patenting in view of the claims in the Vogels patents.

One-way road

Applying the one-way test, the Fallaux claims were rejected for obviousness-type double patenting. Under the one-way test the examiner asks whether the application claims are obvious in light of the claims in the existing patent(s). Under the two-way test, the examiner would also have been required to show that the Vogels claims were obvious in light of the Fallaux claims — and the Fallaux claims would not have been rejected.

The Federal Circuit found that a patent applicant is entitled to the two-way test only when the U.S. Patent and Trademark Office (PTO) is responsible for the delay that causes an improvement patent to issue before the related basic patent (for example, where the applicant files the first application and then a second, but the second application is examined first, resulting in the first application being rejected where it otherwise wouldn’t have been).

Here there was no evidence that the PTO shared any responsibility for the delay. The specification in the first application in the patent family would have supported the Fallaux application’s claims. The inventor, however, chose to prosecute other applications and delay filing the Fallaux application until six years after the first application was filed.

The court doubles down

The Federal Circuit emphasized that the two-way test is a narrow exception. Although the inventor contended that he did not manipulate the prosecution of the patent for an improper purpose, the court declared that “the rule is not … that an applicant is entitled to the two-way test absent proof of nefarious intent to manipulate prosecution.” The test is available only in cases of delay attributable to the PTO. •