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[af]

Here is the fact pattern.

Three patent applications:
 
#1 Method
#2 Apparatus (divisional of #1 filed because of a restriction requirement)
#3 Broader Method (continuation-in-part claiming priority to #1 and #2)

#1 and #2 are both allowed. I received an Office Action rejection on #3 for non-statutory obviousness double patenting. #3 is otherwise allowable. The Office Action requested a terminal disclaimer against #1.

Here is my question. Should I file two terminal disclaimers for application #3? If this ever went to court, could the issued patent #3 be invalidated for not being terminally disclaimed against #2?

Thanks, Alan

[JimIvey]

Well, of course, the safest thing is to file two.  Having said that, I strongly recommend using USPTO forms whenever possible and I'd follow the form -- if it allows for terminally disclaiming two applications, go for it.  Otherwise, file two.

If you try to shoe-horn two applications into the form and file it, they'll certainly let you know if that didn't work and you'll have a chance to correct it.  Though, the MPEP wonks (and I say that with sincere respect -- it's not a derogatory term, is it?) here can tell you whether you'll lose the TD fee on the first, ineffective TD.

Regards.

[af]

As always, thanks Jim for your great advice!

Alan

[khazzah]

Well, of course, the safest thing is to file two.  Having said that, I strongly recommend using USPTO forms whenever possible and I'd follow the form

I read OP as asking a slightly different question ... not how to fill out the form/which form to use, but the threshold question of whether or not to disclaim the second app when the PTO did not mention #2 in the DP rejection.

[JimIvey]

I read OP as asking a slightly different question ... not how to fill out the form/which form to use, but the threshold question of whether or not to disclaim the second app when the PTO did not mention #2 in the DP rejection.

Yeah, re-reading it now, it sure sounds like that.  I think we determined elsewhere in here that TDs can be filed even after issuance of #3, as in during its litigation.  So, I'd say the risk from not disclaiming #2 now is low -- I wouldn't disclaim #2 until it's used in a DP rejection.

I assume the examiner is aware of #2 by way of IDS.  If that's not true, I'd correct that.

Regards.

[af]

I read OP as asking a slightly different question ... not how to fill out the form/which form to use, but the threshold question of whether or not to disclaim the second app when the PTO did not mention #2 in the DP rejection.

Karen, yes you are correct. That was my original question.

Yeah, re-reading it now, it sure sounds like that.  I think we determined elsewhere in here that TDs can be filed even after issuance of #3, as in during its litigation.  So, I'd say the risk from not disclaiming #2 now is low -- I wouldn't disclaim #2 until it's used in a DP rejection.

Thanks, that is clear.

I assume the examiner is aware of #2 by way of IDS.  If that's not true, I'd correct that.

Yes, the same examiner examined #1, #2, and #3, and issued NOAs on both #1 and #2.

[Isaac]

Yes, the same examiner examined #1, #2, and #3, and issued NOAs on both #1 and #2.

Hmm, sounds vaguely reminiscent of a fact pattern from Bridge v. McKesson that blew up in the attorney's and patent holder's faces.   

Jim is right that you can file TDs later.   But delaying the decision to file a TD always raises the risk that some change in the ownership of the patent later down the road will make filing a TD impossible.   I've never heard of anyone tracking decisions not to file TDs in close cases not caught by the examiner, but I have seen one instance of changes in ownership rendering patents unassertable in litigation.

[af]

Hmm, sounds vaguely reminiscent of a fact pattern from Bridge v. McKesson that blew up in the attorney's and patent holder's faces. 

Thanks Issac. I am not deeply familiar with Bridge v McKesson so I just gave it a quick look. In McKesson, wasn't the issue that the applicant withheld disclosures across three different applications? In this case, there is nothing withheld. Am I missing something?

But delaying the decision to file a TD always raises the risk that some change in the ownership of the patent later down the road will make filing a TD impossible.

Yes, the change of ownership issue could be a concern. Since the patents issuing from the first two applications expire as nearly the same date, the real issue is whether to tie ownership of the patents.

[Isaac]

[qs]In McKesson, wasn't the issue that the applicant withheld disclosures across three different applications? In this case, there is nothing withheld. Am I missing something? [/qs]

Yes you are missing something.  In McKesson there were quite a few charges of inappropriate conduct one of which involved failing to remind an examiner of a related application that the examiner had previously allowed.

[af]

Yes you are missing something.  In McKesson there were quite a few charges of inappropriate conduct one of which involved failing to remind an examiner of a related application that the examiner had previously allowed.

Thanks for the clarification, this is good to be aware of and I appreciate you pointing out this case.

Wouldn't application #3 claiming priority to both application #1 and #2 make the examiner aware of both co-pending applications? The examiner considered the same references for all three applications, so I can't see any issues that he would not be aware of.

Is there something I am still missing? (Thanks in advance for your patience)

[NJ Patent1]

"Wouldn't application #3 claiming priority to both application #1 and #2 make the examiner aware of both co-pending applications?"

af:  There is at least one CAFC "inequitable conduct" case out there in which enforceability was "saved" by such a recitation in a spec (no scienter).  But IC cases are very fact specific.  It's my practice  (and that of other practitioners I know) to "flag" the relationship for the Examiner in my transmittal of the first IDS or other paper.  Embarassed I can't remember (and too lazy to go look on Friday afternoon), but there may even be a (strong) suggetion ("should") to do this in the MPEP. 

Getting back to the OP. it's an interesting question.  The Office has said that the apparatus and method are independent and distinct - separately patentable inventions.  In my experience, this is often just a "knee-jerk" reaction on the part of Examiners.  But the Office's conclusion might indeed be given some weight in DCs (did you petition and loose? even better argument if you did).   

If I recall the policies behind double patenting, one is improper temoral extension of the patent.  Ur TD over method patent 1 addresses any improper temporal extension of that parent method patent.  Obviousness type DP looks at the claims of the respective patents / applications.  Unless a method can only be practiced with one apparatus that one apparatus and that apparatus is only good for that one process, I don't see a method claim renedering an apparatus claim obvious, or vice versa.  This "policy" does not appear to be implicated.  But the "safe harbor" of 119 might be (in ur favor - need to think that tru). 

The other policy I recall is "vexating" or "duplicative"  litigation.  Again it boils-down to ur particular facts.  In the chemical arts, it would not be impossible (or even uncommon), for "A" to own a process for making product P, and "B" to own an apparatus that can be used for making, inter alia, product P.  An actor could infringe one or the other or both.  This policy does not appear to be implicated (esp if the Office was right). 

So what to do?  It's really up to the client.  Do they mind keeping 1, 2, and 3 together?  I can imagine a big chem or pharma company not minding if it would avoid what I percieve as a very small "risk". Own all three, practice the method, and license the apparatus to a manufacturer of chem process equipment whilst retaining sufficient rights so that they (owner) would be a necessary party in an action allegeing infringement of apparatus patent 2.  Any litigators care to comment? 

[Isaac]

Unless a method can only be practiced with one apparatus that one apparatus and that apparatus is only good for that one process, I don't see a method claim renedering an apparatus claim obvious, or vice versa.  This "policy" does not appear to be implicated.  But the "safe harbor" of 119 might be (in ur favor - need to think that tru).

I think you've got the policy stuff nailed, but here is something to chew on while you are thinking things through.

In the case of computer related inventions involving software running on general purpose hard ware plus a few special peripherals, it is often the case that the methods and device claims are obvious in view of each other.   In fact, I think practitioners who used to strip all of the apparatus out of their method claims are finding that they need to make those claims look more like the device claims in order to get them allowed.

[af]

In the case of computer related inventions involving software running on general purpose hard ware plus a few special peripherals, it is often the case that the methods and device claims are obvious in view of each other.   In fact, I think practitioners who used to strip all of the apparatus out of their method claims are finding that they need to make those claims look more like the device claims in order to get them allowed.

Isaac - Thank you, the subject matter is not computer related, but your comment here is very helpful.

So what to do?  It's really up to the client.  Do they mind keeping 1, 2, and 3 together? 

I don't think they would mind. Application #2 is simply a by-product of a restriction requirement anyway. It seems like the simple thing to do to avoid any controversy would be to file a terminal disclaimer for application #3 against application #2.  I will discuss this with the client. Application #2 against Application #1 of course is protected by the safe harbor of §121.

Thank you everyone for the extremely helpful and lively discussion!