Obviousness-Type Double Patenting As An Invalidity Defense

05/04/2010

In case you missed it, there was actually an unstated deadline for filing a terminal disclaimer. To be effective, a terminal disclaimer must be filed before expiration of the patent being disclaimed over. But even a belated terminal disclaimer may not be enough to support an obviousness-type double patenting defense under certain circumstances according to the Federal Circuit. Interestingly, the court need not have addressed terminal disclaimer deadlines at all in view of the ultimate holding that the claims were not invalid for obviousness-type double patenting. In Boehringer Ingelheim Int’l GMBH v. Barr Labs., Inc, the Federal Circuit found a terminal disclaimer filed after expiration of the patent being disclaimed over to be ineffective but decided for other reasons that the claims of the patent in-suit were not invalid for obviousness-type double patenting.

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