In a previous post (Double Patenting - Danger for Startups), we discussed the dangers of double patenting rejections for startups that further develop initial IP, such as from a Tech Transfer Office. Some of these pitfalls can be reduced through a joint research agreement, for example. There are other pitfalls with little to no wiggle room, as we see in this recent Samsung case before the PTAB (Application 14/081,917).
While the previous post showed the danger for the startup (e.g., the later developer of the technology), there are also dangers for the original assignee (e.g., the Tech Transfer office). In this case, the original inventors were solely with Samsung, who then licensed out the technology to a university (Georgetown University) and another entity for further development. Samsung’s original application ended up getting slower examination than the later-filed jointly owned Samsung/Georgetown applications. The later applications proceeded to issue and were then cited against the earlier filed Samsung application under the Doctrine of Obviousness Type Double Patenting.
Samsung’s inventions related to methods of treating cancer by administering an anti-human c-Met antibody or an antigen-binding fragment thereof having CDRs comprising various recited SEQ ID NOs. Samsung took the case to the PTAB with various policy arguments, some of which had little chance of success before the PTAB (but were likely made to support a later appeal to the Federal Circuit). Samsung even tried filing terminal disclaims with modified language in an attempt to address the concerns of the doctrine (common ownership and extended term), but the PTAB rejected them. Specifically, even though Samsung was a joint owner of the later applications, and even though there was a joint research agreement, Samsung was unable to effectively overcome the rejection. There were no prior art rejections and so the Double Patenting issue was the only thing standing in the way. Samsung could not effectively file a terminal disclaimer in its solely owned application because “the owners of the currently involved application do not also solely own the [later filed] patents.” Further, Samsung could not use the joint research agreement exception since, according to the PTAB, the rules limit that exception to when a reference is being removed as prior art (which was not the case here because the reference was not prior art). Samsung did not argue the merits of the double patenting rejection and in the end, the PTAB affirmed the rejections and the examiner’s refusal to accept the Terminal Disclaimers.
So, be extremely careful in joint development and technology transfer situations where the are relevant patents with different ownership. Here, there was little for Samsung to do in terms of procedurally overcoming the rejection - there was no common ownership (meaning identical ownership between the application and the reference patents), and the references were not disqualified as prior art so that the joint research agreement was ineffective.