Federal Circuit Holds That Later-Developed Alternative Manufacturing Processes May Be “Patentably Distinct” from Their Related Products
By Tyler Lacey – Edited by Evan Kubota
Takeda Pharmaceutical Co. v. Doll, April 10, 2009, No. 2008-1131
On April 10th, the United States Court of Appeals for the Federal Circuit vacated and remanded the decision of the United States District Court for the District of Columbia, holding that manufacturing processes developed after a product is patented may be “patentably distinct” from their related products.
In a non-unanimous opinion written by Circuit Judge Rader, the Federal Circuit held that “the relevant time frame for determining whether a product and process are ‘patentably distinct’ should be at the filing date of the [process] application.” If there exists only one process to manufacture a product, the process cannot be patented separately from the product because the two are substantially co-extensive. However, if multiple, materially different processes for making a product existed at the time of the product’s invention, then those processes are distinct from the product and can therefore be patented separately. See Manual of Patent Examining Procedure §806.05. This decision now allows for processes discovered after the product’s invention to be considered “patentably distinct,” defeating any patent invalidity claim based on the double patent doctrine. The double patent doctrine prevents a patentee from obtaining extra exclusivity time for a single invention by obtaining two patents for it.
Peter Zura of the 271 Patent Blog summarizes the opinion. The Patent Prospector criticizes the decision arguing that the double patent issue was “resolved badly” and asserting that the court did not “[think] through the implications of its ruling.” Patently-O provides a summary of the original district court opinion. (more…)