Safe Harbor Against Double Patenting Cannot Be Obtained By Post Hoc Change

Author:Mr Nicholas Doyle and Sydney R. Kestle
Profession:Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In In re Janssen Biotech, Inc., No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit declined to allow a patent owner to retroactively qualify for the safe-harbor provision of 35 U.S.C. § 121 by attempting to re-designate a particular patent to overcome a double patenting rejection during reexamination.

During prosecution of a parent application, Janssen responded to a restriction requirement by abandoning the parent and filing a continuation-in-part application (CIP). The CIP claimed the benefit of both the abandoned parent and a second application. Twelve years after the CIP issued as a patent, the PTO reexamined the patent on double patenting grounds. In an attempt to trigger § 121's safe-harbor provision, Janssen cancelled all claims and disclosures not contained in its abandoned parent application. In doing so, Janssen requested that the patent's benefit claim to the second application be...

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