Recently, the relationship and intersection between obviousness-type double patenting (ODP) and any awarded Patent Term Adjustment (PTA) and/or Patent Term Extension (PTE) has received significant attention. The United States Court of Appeals for the Federal Circuit held in In re Cellect, 81 F.4th 1216 (Fed. Cir. 2023), that PTA and PTE, being codified in separate statutes, are treated differently for the purposes of determining the requisite expiration dates in an ODP analysis.
The Federal Circuit’s recent holding in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 2024-1061, 2024 WL 3763599 (Fed. Cir. Aug. 13, 2024), raises the issue of when a claim can be used as a reference claim in an ODP analysis. In particular, the court addressed the question of whether “a first-filed, first-issued, later-expiring claim [can] be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date”. Id. at *4.
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