What's Left of In Re Braat After In Re Berg?

What's Left of In Re Braat After In Re Berg?^[1]

by Charles L. Gholz ^[2]

I. THE PROBLEM THAT THE APPELLANT IN IN RE BERG SOUGHT TO SOLVE

Patent applicants are sometimes faced with a situation where they have (1) a generic invention that is arguably, but not clearly, patentable over the priorart and (2) a subgeneric invention that is more clearly patentable over the prior art and that is arguably patentable over the generic invention. If the applicants disclose and claim the two inventions in one application, it frequently happens that the subgeneric claims are allowed on the first office action and the generic claims are rejected over the prior art. At that point, the applicants have a choice. If they keep the allowed subgeneric claims in the application and contest the rejection of the generic claims, they will delay the issuance of the subgeneric claims-perhaps by years, if they wind up taking an appeal from a final rejection of the generic claims or filing a continuation application to obtain more prosecution of the generic claim. On the other hand, if they immediately file a continuation application containing the rejected generic claims along with a preliminary amendment responding to the rejection, cancel the generic claims from the first application, and pay the issue fee on the first application, they will delay issuance of the generic claims at least by the time required for processing of the continuation application to a first office action and they will receive an obviousness-type double patenting rejection of the generic claims unless they file a terminal disclaimer even if the subgeneric claims are patentably distinct from the generic claims.^[3] That is, a one-way only obviousness test will be applied to the claims in the continuation application, and those claims will fail that test. ^[4]

Neither of the traditional alternatives described in the first paragraph is appealing to patent applicants. Of course, with a modern, twenty-years-from-the- effective-filing-date patent term, the filing of the terminal disclaimer is less important than it used to be, but it still means that common ownership of the two cases must be maintained. ^[5] More-over, especially with a modern, twenty-years-from-the-effective-filing-date patent term, the time lost by the two traditional alternatives is a significant concern.

II. IN RE BERG'S ATTEMPTED SOLUTION TO THE PROBLEM

In an attempt to provide a third, less distasteful alternative, 3M, the assignee of the application on appeal in In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998) (opinion delivered by Circuit Judge Michel for a panel that also consisted of Circuit Judges Clevenger and Gajarsa), ^[6] tried a new approach. It filed two applications on the same day. ^[7] Each application disclosed both the generic and the subgeneric invention, and each application contained comparative evidence tending to prove that the subgeneric invention was patentable over the generic invention. It was, of course, 3M's hope that both applications would be allowed immediately, but it figured that, if the subgeneric claims were allowed and the generic claims were rejected, it would at least save the time that would have been lost if it had followed either of the two traditional procedures described at the outset of this article. Also, 3M recognized that the claims in the two applications might be rejected on the ground of obviousness-type double patenting, but it thought that, in view of In re Braat, ^[8] that would happen only if the examiner ruled that the subgeneric claims were not patentable over the generic claims. That is, 3M thought that a two-way obviousness test would be applied and that it would not have to file a terminal disclaimer because it could prove that its subgeneric claims were patentably distinct from its generic claims.

III. WHAT HAPPENED IN IN RE BERG

Unfortunately for the patent bar and patent owners, 3M's innovative attempt was not successful. Things started out fine. 3M received a notice of allowance of all of the claims in the application that contained the subgeneric claims. However, less than a week later, it received (from the same examiner) a rejection of all of the claims in the application that contained the generic claims-but only on the ground of obviousness-type double patenting. That is, the generic claims were not rejected over the prior art. The double patenting rejection was initially provisional, since the subgeneric claims were still in an application. However, 3M paid the issue fee on the application that contained the subgeneric claims, ^[9] and that application matured into a patent in due course. At that point, the double patenting rejection ceased to be provisional.

3M refused to file a terminal disclaimer, the double patenting rejection was made final, and 3M appealed to the board.

The board affirmed the double patenting rejection, but, importantly, it did not assert that the subgeneric claims were unpatentable over the generic claims. Instead, it asserted that the generic claims were unpatentable for obviousness-type double patenting over the subgeneric claims (which, of course, was tautologically true), and it asserted that the delay in issuance of the generic claims was all (or, at least, mostly) 3M's fault because, if it had immediately filed a terminal disclaimer in response to the double patenting rejection, the generic claims would have been promptly allowed.

3M then appealed to the Federal Circuit, pointing out that its ability to file a terminal disclaimer to obviate the double patenting rejection was not the issue-the issue was whether the double patenting rejection was proper in the first place! In addition, it argued that, under In re Braat, it was entitled to application of the two-way obviousness test (i.e., the double patenting rejection was not proper if the subgeneric claims were patentable over the generic claims) because the fact that the subgeneric claims issued first was the PTO's fault. That is, if the examiner who examined both applications and who found both applications allowable over the prior art had simply allowed both applications at the same time, they would probably have issued on the same day. Finally, 3M argued that application of Braat's two-way obviousness test rather than Goodman's one-way obviousness test in cases of this sort was in the public interest because, on average, it would lead to issuance of the two patents (and, thus, disclosure of the common assignee's total patent protection) more quickly.^[10]

The Federal Circuit affirmed the board's rejection, basically disavowing the "fault" rationale that the Federal Circuit had relied on in Braat and substituting a control rationale:

For its own reasons, Berg chose to file two applications even though conventional practice presumably would have counseled filing one application. We hold, therefore, that if an applicant can file all of its claims in one application, but elects not to, it is not entitled to the exception of the two-way test. ^[11]

[S]imultaneously filing two separate applications that could have been filed as one application disqualifies Berg from the two-way test. Rather, Berg should be viewed as having taken a calculated risk that, by simultaneously filing two separate applications, it might gain the advantage of a quickly issued, narrow patent and also the advantage of a broader application which took longer to issue as a patent but consequently had a later expiration date. Effectively extending the patent term, however, is precisely the result that the doctrine of obviousness-type double patenting was created to prevent. See Goodman, 11 F.3dat 1051, 29 USPQ2d at 2015.

Here, the examiner and the Board were correct in applying the one-way test. The two-way exception can only apply when the applicant could not avoid separate filings, and even then, only if the PTO controlled the rates of prosecution to cause the later filed species claims to issue before the claims for a genus in an earlier application. ^[12]

Of course, the Berg panel could not overrule Braat, ^[13] but it distinguished Braat as follows:

Braat was an unusual case; moreover, its factual situation is not likely to be repeated since the 1984 Act went into effect. Even assuming that Braat retains some vitality, it is, nevertheless, distinguishable. In Braat the common assignee could not have filed both sets of claims together because the inventive entity named in the application did not invent the subject matter of all the patent claims and viceversa. ⁴ See Braat, 937 F.2d at 594, 19 USPQ2d at 1293. In addition, in Braat the "patent invention...[was] totally separate from that of [the application], and could conceivably have been developed earlier rather than later." Id. at 593, 19 USPQ2d at 1292.

⁴ Both applications were filed before the 1984 Act took effect. Prior to the1984 Act, inventors could not apply jointly unless each made an inventive contribution to the subject matter of every claim. Under the 1984 Act, 35 U.S.C. § 116 was amended so that "[i]nventors may apply for a patent joint eventhough...each did not make a contribution to the subject matter of every claim." ^[14]

IV. COMMENTS

Of course, for applications filed on or after June 08, 1995, using the technique that 3M tried would not even arguably "[e]ffectively extend[] the patent term...." ^[15] Hence, the extension of patent term point on which 3M went a cropper won't apply to such applications, and perhaps a different result could be obtained. That is, if the court were not concerned to prevent "effective extensions of patent terms," ^[16] perhaps it could be persuaded that there is both a public interest and a legitimate private interest in obtaining early issuance of all patents having substantially the same disclosure. ^[17]

Note also that, even if the subgeneric invention had not been made as of the filing date of the application containing the generic claims, the PTO (or an alleged infringer) could argue that the common assignee is not entitled to "[t]he two-way exception" because it "could...have avoid[ed] separate filings" by (1) waiting to file an application disclosing and claiming the generic invention until after it had made the subgeneric invention or (2) filing an application on the generic invention and, if an improvement invention were made while the application disclosing and claiming the generic invention was still pending, filing a continuation-in-part application disclosing and claiming both inventions. I have discussed this possibility with Prof. Irving Kayton, who views this scenario as "far fetched." However, I disagree--particularly if the subgeneric invention were made shortly after the filing date of the first application and as the result of a research program begun before the filing date of the first application. In that situation, I think that the PTO might well take the position that the common assignee was under some kind of an obligation to delay filing (or, at least, issuance) of the application disclosing and claiming the generic invention until it could file an application disclosing and claiming both the generic invention and the subgeneric invention.

V. SO, WHAT'S LEFT OF IN RE BRAAT?

At the moment, not much. If In re Braat is truly to be limited to its facts, those facts will never occur again-at least on appeal from the Patent and Trademark Office. [18] Accordingly, the only hope for resurrecting In re Braat is to file two more applications a la those involved in In re Berg and to argue that In re Berg should be limited to its most important fact-which was that both Berg applications were filed before June 08, 1995. Thus, it can be argued that Berg's holding only applies to applications filed before June 08, 1995, and to patents that matured from applications filed before June 08, 1995.

Published in The Journal of the Patent and Trademark Office Society, volume 80, November 1998, pages 845-850.

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Endnotes

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1. Copyright 1998 Charles L. Gholz.

2. Mr. Gholz is a partner in and head of the interference section of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. in Arlington, Virginia. His e-mail address is cgholz@oblon.com. I acknowledge with thanks the contributions of my colleague, former Administrative Patent Judge, Alton D. Rollins.

3. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).

4. Specifically, the applicants cannot argue successfully that they should not have to file a terminal disclaimer because their subgeneric claims are patentably distinct from their generic claims.

5. Merck & Co. v. USITC, 774 F.2d 483, 227 USPQ 779 (Fed Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982) (Rich, J.); and 37 CFR 1.321(b).

6. In the interest of complete candor, I note that I represented the appellant.

7. That day was prior to June 08, 1995. Accordingly, when 3M filed those applications, it knew that, absent a terminal disclaimer, any patent that matured from either application would be entitled to a term of seventeen years.

8. 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 1991) (Rich, J.). In Braat the court held that, in the common situation where a patent with narrow claims issues first and broader claims in a commonly assigned application are then rejected on the ground of obviousness type double patenting based on one or more claims in the first issued patent, the common assignee is entitled to the broader claims without having to file a terminal disclaimer if (1) the narrower claims in the first-to-expire patent are patentably distinct from the broader claims in the pending application or the second-to-expire patent and (2) the delay in issuance of the broader claims was the PTO's fault. In Braat the court found that the delay was the PTO's fault because (1) it rejected those claims on the ground of obviousness-type double patenting and (2) the court reversed that rejection. That is, there would have been no delay in the issuance of the broader claims if the PTO had not made the incorrect obviousness-type double patenting rejection.

9. Remember, the whole point of this technique was to get at least the subgeneric claims issued as quickly as possible.

10. During oral argument, one of the judges discounted this argument entirely, pointing out that the technical disclosure in the two applications was identical. While that was, of course, true, I still think that early disclosure of the extent of the common assignee's total patent protection is also important. After all, the pending Berg et al. continuation application was, in effect, an involuntary "submarine application"!

11. 140 F.3d at 1434, 46 USPQ2d at 1231; footnotes omitted.

12. 140 F.3d at 1435, 46 USPQ2d at 1231-32; footnotes omitted.

13. South Corp. v. United States, 690 F.2d 1368, 215 USPQ 657 (Fed. Cir. 1982) (in banc).

14. 140 F.3d at 1433-34, 46 USPQ2d at 1230.

15. This assumes that the examiner allows both applications. If, as in Berg, the examiner allowed the application containing the subgeneric claims but rejected the generic claims in the other application on the ground of double patenting, if the applicant appealed from that rejection, and if that appeal was successful, the term of the patent containing the generic claims would be extended up to five years under 35 USC 154(b)(2). However, that would presumably only happen once. That is, if the court reversed such a rejection, presumably the PTO would stop making the rejection, and thereafter the two patents would automatically expire at the same time in this situation.

16. I suspect that "effective extensions of patent terms" was seldom a problem even before the advent of twenty-years-from-the-effective-filing-date patent terms because so few patents are of commercial importance during their "declining years." However, the court, perhaps unduly influenced by the URAA cases, where parties spent millions of dollars arguing over a few month's extension of time of important pharmaceutical patents, clearly suspected that 3M's real motive was to extend its effective term of protection by obtaining a patent on the dominant claims that would not expire until after its patent on the subordinate claims has expired.

17. The public interest would be in obtaining prompt disclosure of the common assignee's total patent protection. See footnote 10, supra, and the accompanying text. The private interest would be in obtaining as much patent protection as possible (i.e., both broad claims and narrow "fall back" claims) as quickly as possible.

18. There is a remote possibility that the specific facts involved in In re Braat could come up again in the context of an appeal in an infringement action involving a patent that issued before 1984.