Update your allowance checklists: CAFC says to rethink about divisional applications.

If you receive a notice of allowance in an application containing a restriction requirement, make sure you file one or more divisional applications containing the non-elected subject matter before the patent issues.  And for crying out loud, check the right boxes during prosecution.  Otherwise, your child, grandchild, etc. applications might not be able hide behind § 121’s safe harbor.  See, Amgen Inc. v. F. Hoffmann-La Roche Ltd, Slip ops. 2009-1020, -1096 (Fed. Cir. Sep 15, 2009).

Amgen filed a base application, which was restricted in multiple ways.  The non-elected subject matter was canceled and not immediately pursued in the next generation of “continuation” child applications. After the application containing the restriction issued, the restricted subject matter was pursued in “continuing” grandchild & great-grandchild applications.  In litigation, a dispute developed about whether or not the earlier issued patent’s claims can be used against the claims in the grandchildren & great-grandchildren patents under a theory of obviousness-type double patenting (ODP). On one hand, Amgen urged that these claims were shielded by the protections afforded by § 121’s safe harbor.  HLR, on the other hand, urged that Amgen waived its protections by failing to comply with the required procedure to invoke the § 121’s safe harbor.  The majority agreed with HLR.

In one simple aspect, claims of a Parent were applied against the claims in a Great-grandchild application. Between the Parent and the Great-grandchild are two serial generations of continuation applications. 

The majority held that the Great-grandchild patent does not receive the protections afforded by § 121’s safe harbor. The majority reasoned that § 121’s plain meaning says that the safe harbor shall shield a divisional from the effects of an earlier issued patent, “if the divisional application is filed before the issuance of the patent on the other application.”  Add a logical connector, not mentioned in the opinion, called the cannon of expressio unius est exclusio alterius (i.e., expressly mentioning one thing excludes others), and you reach the conclusion that the Great-grandchild cannot hide behind § 121’s safe harbor, unless, as relevant here, it was “filed before the issuance of the patent on the [parent] application” containing the restriction requirement.

After interpreting the statute, the majority refused to find broad exceptions in cited precedent.  To the contrary, it narrowly interpreted cited precedent as merely standing for the proposition that an “intervening continuation applications do not render a patent ineligible for § 121 protection so long as they descended from a divisional application filed as a result of a restriction requirement.”  Slip op. at p. 17.

Parent [restriction] – Child [divisional] – Grandchild [continuation] – Great-grandchild [divisional]

The majority contrasted this situation with Amgen’s family, because during prosecution Amgen identified the child application as a “continuation” rather than a divisional. Thus, the dispositive issue was whether or not the Great-grandchild was filed before the Parent issued. It was not, and thus, the Parent’s claims are ODP prior-art against the claims of the Great grandchild.