Safe Harbor Against Double Patenting Cannot Be Obtained by Post Hoc Change

In In re Janssen Biotech, Inc., No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit declined to allow a patent owner to retroactively qualify for the safe-harbor provision of 35 U.S.C. § 121 by attempting to re-designate a particular patent to overcome a double patenting rejection during reexamination.

During prosecution of a parent application, Janssen responded to a restriction requirement by abandoning the parent and filing a continuation-in-part application (CIP). The CIP claimed the benefit of both the abandoned parent and a second application. Twelve years after the CIP issued as a patent, the PTO reexamined the patent on double patenting grounds. In an attempt to trigger § 121’s safe-harbor provision, Janssen cancelled all claims and disclosures not contained in its abandoned parent application. In doing so, Janssen requested that the patent’s benefit claim to the second application be deleted and that the CIP that ripened into the now-challenged patent be re-designated as a divisional application of the abandoned parent. The PTO declined to do so and invalidated the patent for double patenting. Janssen appealed from this decision.

The Federal Circuit declined to apply the safe-harbor provision. The court reasoned Janssen’s choice to file a CIP instead of a divisional in response to a restriction requirement precluded it from qualifying for the safe harbor.