In re Janssen: Continued Evolution Of the Obviousness-Type Double Patenting Doctrine

By Jacob Moore

On Jan. 23, 2018, the Federal Circuit in In re Janssen held that a patent issuing from a continuation-in-part (CIP) application is not eligible for 35 USC § 121 safe harbor protection, even if the patent is re-categorized as a divisional application during reexamination. Thus, the court determined that the patent at issue—US 6,284,471 (the ’471 Patent)—was invalid over reference patents US 5,656,272 (the ’272 Patent) and 5,698,195 (the ’195 Patent) under the doctrine of obviousness-type double patenting.

In re Janssen is the newest case in a line of recent decisions interpreting the scope of the safe harbor provision, which shields a patent or application from an obviousness-type double patenting rejection under certain conditions. That provision provides:

A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application.

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