In the Federal Circuit’s recent 2-1 decision In re Hubbell, the court clarified the scope of the doctrine of obviousness-type double patenting as it applies to applications and patents that have overlapping inventors, but are not commonly owned. The court’s decision provides a clear ruling on the subject of double patenting in cases of no common ownership, and cautions assignees to monitor inventorship of assigned patents and to stay aware of any future inventions of scientists who have changed institutions.
The court rejected all Hubbell’s arguments. Because there were several common inventors, the double patenting rejection was proper even in the absence of common ownership or obligation to assign. The court held that that the CREATE Act was not applicable, as there was no JRA in place at the time of filing the second application, and, therefore, filing a terminal disclaimer was not a viable solution. Also, the two-way test for obviousness applies only in situations where the earlier-filed application issued after the later-filed patent due to patent office delay during prosecution. In the ‘509 application, the applicant admitted responsibility for some of the prosecution delay and therefore the two-way test did not apply. The Hubbell court reiterated two “justifications” for obviousness-type double patenting. The first is to prevent unjustified timewise extension of the right to exclude granted by a patent, and the second is to prevent multiple infringement suits (harassment) by different assignees asserting essentially the same patented invention. The court contends that a potential infringer could face separate suits from both Caltech and ETHZ, and therefore the Hubbell situation was the precise situation the statute was designed to prevent.
Possible ways to avoid the Hubbell conundrum