Benjamin Appelbaum, Attorney at Law

Patent term adjustment claims may depend on parent patents

New Jersey businesses and citizens who own intellectual property may discover that legal precedent limits their ability to benefit from practices like patent term adjustment. Patent term adjustment is sometimes granted following extended examination and approval processes. In some cases, however, courts may disallow adjustments on the grounds that patents are invalid because they duplicate earlier claims, which could constitute obviousness-type double patenting.

In late December 2015, a district court judge in Michigan made a decision concerning one company's October 2006 patent filed as a continuation of a November 1999 patent. The original patent wasn't actually issued until March 2008, and it was granted patent term adjustment. After the 2006 patent was filed, it was issued in July 2008 with only 63 adjustment days as compared to its parent patent's 498 days.

Using an earlier decision from the U.S. Court of Appeals for the Federal Circuit as precedent, the judge determined that a third patent that was the grandchild of the original counted as an obviousness-type double patent against its grandparent. Observers say that the precedent case didn't actually establish whether its decision should apply to all forms of parent-child patent relationships. Notably, the parent patent that the plaintiff protested in the 2015 dispute wasn't actually the child patent cited. Because the parties settled, however, legal analysts say that further trials are needed to determine how this form of double patenting impacts adjustments.

Companies that file for patents sometimes have to wait for them to be issued. When they later attempt to build on their intellectual property or pending patents, they may run into issues such as untimely expiry. In some cases, these problems are exacerbated by the existence of earlier patents. Those who want to avoid patent law hangups may want to have the assistance of an attorney when performing advanced patent research and analysis.

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Benjamin Appelbaum, Attorney at Law - Intellectual Property

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