A terminal disclaimer filed after the expiration of the earlier patent (“retroactive terminal disclaimer") over which claims have been found obvious cannot cure obviousness-type double patenting. Slip op. at 12.
The § 121 safe-harbor provision may apply to a divisional of a divisional of the application in which a restriction requirement was entered. Id. at 20.
The § 121 “as a result of” requirement applies to the challenged patent as well as the reference patent. Id. at 21.
The reference patent application was a divisional of the challenged patent application, which in turn was a divisional of the parent application that was subject to a restriction requirement. Later, the patentee filed a retroactive terminal disclaimer to overcome obviousness-type double patenting. The Federal Circuit agreed with the district court that the retroactive terminal disclaimer cannot cure obviousness-type double patenting. The patentee also argued that the safe-harbor provision of 35 U.S.C. § 121 prevents the reference patent to be used as a reference. The Federal Circuit reversed the district court’s ruling that the safe-harbor provision of 35 U.S.C. § 121 does not apply in this case, and remanded the case back to the district court.
Note that the Federal Circuit explained when a retroactive disclaimer cannot cure obviousness-type double patenting:
By failing to terminally disclaim a later patent prior to the expiration of an earlier related patent, a patentee enjoys an unjustified advantage—a purported time extension of the right to exclude from the date of the expiration of the earlier patent. The patentee cannot undo this unjustified time wise extension by retroactively disclaiming the term of the later patent because it has already enjoyed rights that it seeks to disclaim. Permitting such a retroactive terminal disclaimer would be inconsistent with “[t]he fundamental reason” for obviousness-type double patenting, namely, “to prevent unjustified timewise extension of the right to exclude.”
Slip op. at 12 (note: due to formatting issues, original underlines have been replaced with italics.).
Also, section 121 provides in relevant part:
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application . . . .
35 U.S.C. § 121 (emphasis added).