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In re Cellect: When Extra Term Becomes a Liability

Federal Circuit, decided 28 August 2023. Read from the opinion; quotations verified against the court's text.

Read this with Allergan v. MSN. It is not optional. This decision creates an exposure. Allergan v. MSN bounds it. On its own, the natural response to this page is "file terminal disclaimers across the family," and that response surrenders patent term you may not have had to give up. Once a patent issues subject to one, the surrendered term is not recoverable.
Holding

On August 28, 2023 the Federal Circuit held that for obviousness-type double patenting the relevant expiration date is the one after Patent Term Adjustment has been added, while for Patent Term Extension it is the date before the extension, so the extra term a patent receives for Patent Office delay can expose it to invalidation over a family member.

When the Patent Office takes too long, it gives back the lost time as Patent Term Adjustment. That sounds like a pure benefit. This decision holds it is not.

Double patenting asks whether one patent improperly extends exclusivity past a related one, and the Federal Circuit held the comparison uses the expiration date after the adjustment is added. So the reward for the Office's own delay can be what makes a family member invalid.

A different extension, Patent Term Extension, is treated the opposite way. That distinction is the one to keep straight: PTA counts, PTE does not.

The Escape Routes the Court Closed

What makes the decision sting is not only the holding. It is that the court foreclosed the arguments a patent owner would reach for next.

  • Good faith is not reviewable in this posture.
  • A promise never to split ownership of the family is not evidence that saves the patent.
  • A terminal disclaimer cannot be filed once a patent has expired. The window closes, and having acted reasonably does not reopen it.

That last point is the timing trap. The remedy exists, and it stops existing at a date that arrives whether or not anyone is watching for it.

What This Case Is Not

This page does not tell you to file terminal disclaimers. That is the over-correction Allergan exists to prevent, and it costs term permanently. Whether any particular family member needs one depends on filing order, issuance order and expiration dates that only someone holding the actual family can work out.
  • It does not establish that a reader's family is at risk. It establishes how the comparison is measured.
  • It does not make any continuation strategy safe or unsafe. Portfolio strategy is legal advice with irreversible consequences in both directions.

Educational, not legal advice. Consult a qualified patent attorney with your actual family before disclaiming anything.

Sources