It makes sense why the same invention cannot be patented twice, but what about obvious variants of the invention? As we just learned, the same invention cannot be patented twice because it leads to an extension of a patent monopoly that doe snot provide the public with any additional benefit. More important, we saw how the prohibition against double-patenting has statutory legitimacy since it traces its lineage to 35 U.S.C. 101. However, §101 does not provide any prohibition against multiple patents to inventions that are obvious variants of each other. Nevertheless, ajudicially created doctrine of “obviousness-type” double patenting has evolved that governs these situations. The doctrine originates from the recognition that allowing obvious variants of the same patentable subject matter would effectively extend patent life for inventions that are different but still not patentably distinct. As amatter of public policy, allowing such extensions for obvious variations of previous inventions would be counterproductive to the purposes of patent law, which is to reward true innovation but not obvious changes to previous inventions. In statutory double patenting, the solution is that only one patent can issue to the same invention,the second is not allowed. For obviousness-type double patenting, the solution is not quite as severe to the patentee. In obviousness-type double patenting, an obvious variant of an earlier-issued patent can in some cases still be patented but with the catch that the assignee of the two patents must agree that the term of the second patent is limited in terms of its length of enforceability to the same term as the earlier-term patent. This agreement is known as a terminal disclaimer and works as a compromise between an unreasonable extension of patent life for an obvious variant while still allowing the party holding the patents the ability to capture the full scope of the claimed inventions. The terminal disclaimer also prohibits separate assignments of the two or more patents that are terminally disclaimed. The prohibition against the separate assignment serves to prevent an assignee from splitting a group of terminally disclaimed patents and assigning them to different parties. If such asplitting of assignments was allowed, then one infringer could have multiple parties pursuing them for infringing what in effect is one invention. While this would not extend the term of the patent, it could multiply the value of the patent by separate assignments despite the fact that there are not multiple distinct inventions involved.

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 variant of the earlier-claimed compound B. Nevertheless, the inventors wish to claim the compound in the later patent application, but if they do so, they will receivea provisional obviousness-type rejection. If and when the earlier patent application issues as a patent, the provisional rejection will be converted to an actual rejection in the later patent application. If there are no other impediments to the later patent application issuing, the applicant may acquiesce to a terminal disclaimer and have the later patent to compound D issued. The terminally disclaimed patent will list on the cover page that it is subject to a terminal disclaimer and list the earlier patent to which its term is tied. Despite the term limitation on compound B, the patentees will still have an enforceable right specifically with respect to that compound that they otherwise would not have had.

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