14Feb 2018

Silvia Salvadori - Federal Circuit Affirms: Divisional Applications, not CIP ApplicationsIn a recent case, In re Janssen Biotech, Inc., the Federal Circuit affirmed that 35 U.S.C. 121 applies to divisional applications, but not CIP applications.

35 U.S.C. 121 has been interpreted to prohibit claims in a divisional application (filed following a restriction requirement) from being cancelled or rejected based upon the parent application. In this case, however, following a restriction requirement, the patent owner abandoned the original application and filed two separate continuation-in-part applications, adding new matter to both.

According to the Federal Circuit—without a divisional application—section 121 safe harbor does not apply.

The court relied on in Searle, which held that a patent owner could not acquire the benefits of §121 by amending a CIP application to be a divisional application during reissue proceedings. Thus, the patent of Janssen was held invalid for being unpatentable under the doctrine of obviousness-type double patenting over three patents of the same family—because a patent cannot retroactively become, for purpose of section 121 a “patent issued” on a divisional application, after it’s already issued on a CIP application.

Contact me with questions or comments at silvia@salvadorilaw.com.

Silvia Salvadori, PhD

Silvia Salvadori, PhD

www.salvadorilaw.com

silvia@salvadorilaw.com

(212) 897-1938