← Back to Patent Term and Double Patenting

Allergan v. MSN: The Limit on In re Cellect

Federal Circuit, decided 13 August 2024. Read from the opinion; quotations verified against the court's text.

Read this with In re Cellect. It is not optional. This decision bounds an exposure that In re Cellect creates. On its own, this page reads as "double patenting is not a concern," and that reading could lead you to skip a terminal disclaimer you actually need. The holding here covers one specific ordinal configuration, not the whole problem.

And with Ex parte Baurin for what happens during examination. A precedential USPTO panel has since read this decision narrowly enough that it "will rarely, if ever, arise in original examination." That is agency practice, not law, and the distinction matters in both directions.
Holding

On August 13, 2024 the Federal Circuit held that "a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority" date, because the first patent in a family is the one that sets the maximum period of exclusivity rather than an improper extension of it.

After In re Cellect, patent owners worried that any family member expiring later than a relative was exposed to double patenting, and the reflex was to file terminal disclaimers and give up term. This decision stops that.

The court held that on this family configuration, the first-filed and first-issued patent is the one that sets the ceiling on exclusivity, so it cannot be an improper extension of anything, and a later-filed, later-issued relative that happens to expire earlier cannot be used against it. The filing order, the issuance order and the expiration order all do work in that sentence. Change one and the analysis is not the same.

Filing order and issuance order are what matter, and they have to be analyzed before anyone disclaims term they did not have to.

The Second Holding, and the Dissent

The court reversed on an independent second ground as well: a claim present in the original application supports itself for written description purposes, whether or not that claim survived prosecution.

Judge Dyk joined the double-patenting half and dissented from that one. Worth knowing, because it marks which half of this decision is settled and which is contested.

What This Case Is Not

This is not a holding that your family is safe. It covers one ordinal configuration: first-filed, first-issued, later-expiring, attacked by a later-filed, later-issued, earlier-expiring relative with common priority. Change the order and the analysis changes. Reading this as general reassurance is the mirror image of the Cellect trap, and it is expensive in the opposite direction.
  • It does not say any particular patent is or is not at risk.
  • It does not say a reader does not need a terminal disclaimer.
  • Portfolio strategy has irreversible consequences either way, and it belongs to a patent attorney with the actual family in front of them.

Educational, not legal advice. Consult a qualified patent attorney about your own family and its filing and issuance order.

Sources