Patent Law

Doubled Over

By Gary Odom and Jordan Kuhn

Dr. Frits Jacobus Fallaux got stubborn and stayed that way. The fifth in a family series ran into a double patenting rejection. The examiner applied the normal one-way test for obviousness-type, i.e., non-statutory double patenting on some claims. Rather than file a terminal disclaimer to overcome, which would have limited patent term, Fallaux countered that the more rarely applied two-way test was appropriate.

In re Fallaux (CAFC 2008-1545) precedential

Under the two-way test, the examiner would have been required to show that the instant claims were obvious in light of the previous ones, a test that the examiner agreed with Fallaux would have failed, and the rejection overcome. But the examiner stuck to his guns that the two-way test was appropriate, because the one-way test is only applicable if the issuance of the prior patents "was due to administrative delay on the part of the PTO."

Fallaux, no evidence at hand regarding PTO delay, lost at the BPAI. At the CAFC:

"In determining double patenting, a one-way test is normally applied, in which 'the examiner asks whether the application claims are obvious over the patent claims.'" In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371, 1375 (Fed. Cir. 2008) (quoting In re Berg, 140 F.3d 1428, 1432 (Fed. Cir. 1998)). The two-way test "is a narrow exception to the general rule of the one-way test." Berg, 140 F.3d at 1432. When applying the two-way test, "the examiner also asks whether the patent claims are obvious over the application claims." Id. The two-way test arose out of the concern

to prevent rejections for obviousness-type double patenting when the applicants filed first for a basic invention and later for an improvement, but, through no fault of the applicants, the PTO decided the applications in reverse order of filing, rejecting the basic application although it would have been allowed if the applications had been decided in the order of their filing.

Id. "The two-way test is only appropriate in the unusual circumstance where, inter alia, the United States Patent and Trademark Office (PTO) is 'solely responsible for the delay in causing the second-filed application to issue prior to the first.'" Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 n.7 (Fed. Cir. 2001) (quoting Berg, 140 F.3d at 1437); see also Basell, 547 F.3d at 1376; Emert, 124 F.3d at 1461 (applying the one-way test because the applicant "had significant control over the rate of prosecution of the application," "was responsible for the delays in prosecution," and "orchestrated the rate of prosecution"); In re Goodman, 11 F.3d 1046, 1053 (Fed. Cir. 1993) (applying the one-way test because "PTO actions did not dictate the rate of prosecution"); MPEP § 804 ¶ II.B.1.(b) (8th ed., rev. 7, 2008) (advising that the two-way test should be applied when "there is administrative delay"). In short, the applicant is entitled to the narrow exception of the two-way test when the PTO is at fault for the delay that causes the improvement patent to issue prior to the basic patent.

Dr. Fallaux did not show--nor is there any evidence to suggest--that the PTO shared any responsibility for the delay.

Affirmed.

Full post as published by The Patent Prospector on May 07, 2009 (boomark / email).