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Section 121 safe harbor applies only to divisional, not continuation-in-part; later patent invalid

By McKee, Voorhees & Sease, P.L.C.

In a decision last week, the Federal Circuit construed the scope of § 121's allowances for subsequent patent applications directed toward nonelected inventions in response to a restriction requirement.  There were three patents at issue, one directed to pharmaceutical compounds, one to compositions containing those compounds, and a third covering methods of suing the compounds.  The method of use patent was derived from a continuation-in-part application filed after a restriction requirement in the original application.  The district court held that notwithstanding how the application was styled, it was entitled to the original application's priority date.

The Federal Circuit disagreed, holding that § 121, by its terms, is limited to divisional applications.  As a result, the method of use patent was not entitled to the earlier filing date, and was invalid for obviousness-type double patenting based on the composition patent.  The court affirmed the district court's findings that the best mode requirement was not violated and that no inequitable conduct had occurred.

More detail of Pfizer, Inc. v. Teva Pharms. USA, Inc. after the jump.

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Full post as published by FileWrapper on March 12, 2008 (boomark / email).