35 U.S.C. § 101 limits an inventor to only one patent per invention. Courts have extended this limitation by crafting the judicially created doctrine of obviousness-type double patenting (“ODP”),1 which “prohibit[s] the issuance of the claims of a second patent that are not patentably distinct from the claims of the first patent.”2

Two policy rationales underlie ODP. The first is to prevent an unjustified time-wise extension of the right to exclude granted by a patent, while the second is to protect potential infringers from “harassment by multiple assignees” when the primary and reference patents or applications are owned by different parties.3

[1] In re Longi, 759 F.2d 887, 893 (Fed. Cir. 1985).
[2] In re Janssen Biotech, Inc., 880 F.3d 1315, 1318 (Fed. Cir. 2018).
[3] In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013).

© 2022 CCH Incorporated. All Rights Reserved.