Double patenting

Patents that constitute double-patenting because they claim subject matter that is obvious in view of the claims of another patent invented by Ihe same person. 

Fosamax provides an example of how double-patenting with a terminal disclaimer may result in multiple 30-month stays. The brand-name company listed and initially sued on the earlier patent. No. 5,849,726 (the 726 patent), which claims a method for treating and/or preventing bone loss using the anhydrate form of alendronate sodium. The later patent. No. 6,008,207 (the 207 patent), was a continuation of the 726 patent. It claims a method for treating bone resorption and a method for... 

In re Lonardo, 119 F.3d 960, 965 (Fed. Cir. 1997) See In re Goodman, 11 F.3d 1046, 1052 (Fed. Cir. 1993). The Patent Office allows a terminal disclaimer to cure an obviousness-type double patenting rejection only when the same entity owns both patents. 

To better envision an obviousness-type double patenting scenario, let s briefly rework the facts from the hypothetical of our statutory double patenting example just stated. In that example, we explained that attempting to claim the exact same compound twice (compound B) was not permissible, even though the earlier patent application was not 102 prior art. In this earlier scenario, we stated that the later patent application contained additional compounds that were not disclosed in the earlier patent application—compounds D and E. Since we have not yet discussed the analytical framework for obviousness, let s assume that compound D is an obvious... 

The state of the art for this purpose is defined as not including documents under Article 54(3) EPC, that is, patent applications which were not published at the flUng date of the patent application under consideration. It cannot really be expected that an invention B should display an inventive step as compared with another invention A which was totally unknown at the hling date of the application B being considered. (As to novelty, the contents of European patent applications still unpublished at the hlling date are retained, to avoid granting two patents for the same invention, i.e. double patenting). 

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