LITIGATION TRENDS 2025 | 89 T O C E M P E S G A N T I I P C A P R O W C S P O R T C O N T A C T I N T A P P P A T C C L S E C could be invalidated by an earlier-expiring patent in the family. At least as to the first-filed application in a family that issues first as a patent, Allergan puts that particular fear to rest. In Allergan, an original application issued as the ’356 patent with a PTA and was not subject to a terminal disclaimer, providing for an expiration date of June 24, 2026. Two continuation patents – the ’011 patent and the ’709 patent – shared the same priority date as the ’356 patent, but without a PTA, providing for expiration dates of March 14, 2025. The Federal Circuit held in Allergan, that a first-filed, first-issued patent with PTA is not subject to ODP over a laterfiled, later-issued child patent. The court relied on the ODP doctrine’s purpose to prevent unjust extension of patent protection, as well as the legislative intent behind the PTA, which accounts for delay by the Patent Office during examination. In other words, the later-filed patents in the family did not extend the term of the first-filed patent. As a practical matter, Allergan provides a narrow path forward for preserving PTA for a first-filed, first issued patent, allowing it to retain its full term (including any PTA), without requiring a terminal disclaimer, even if any child patent(s) are not patentably distinct. As a cautionary note, however, Allergan does not address any other patents issuing from the first-filed application with different timings, such as a patent issuing from a divisional that issues prior to the patent from the original-filed application. While it reasonably follows that the first-issued patent from a family, even if it was not issued from the first-filed application, would also not be subject to ODP, this is not entirely settled. In addition, to the extent possible, these cases highlight the need to consider ODP issues from the outset and how past or ongoing prosecution impacts the validity and term of previously filed patents in light of the new treatment of PTA in ODP analysis. New Obviousness Test for Design Patents In 2024, the Federal Circuit overturned long-established precedent for assessing nonobviousness of design P A T CONTINUATION Priority Application FILED OCT. 6, 1997 ’255 Patent ’626 Appl JUL. 10 2000 ’621 Appl AUG. 21, 2001 ’621 Patent FEB. 21, 2006 ’626 Patent SEPT. 17, 2002 ’036 Appl JUL. 17, 2002 ’369 Appl AUG. 15, 2000 ’369 Patent JUL. 23, 2002 ’742 Appl AUG. 23, 2001 ’742 Patent JAN. 3, 2006 726 Day PTA 45 Day PTA 59 Day PTA 759 Day PTA No PTA ’036 Patent MAR. 1, 2005 EXPIRATION WITHOUT PTA OCT. 6, 1997 CONTINUATION IN PART Allergan, 111 F.4th at 1364. Cellect, 81 F.4th at 1220. CONTINUATION Priority Application FILED OCT. 6, 1997 ’255 Patent ’626 Appl JUL. 10 2000 ’621 Appl AUG. 21, 2001 ’621 Patent FEB. 21, 2006 ’626 Patent SEPT. 17, 2002 ’036 Appl JUL. 17, 2002 59 Day PTA 759 Day PTA No PTA ’036 Patent MAR. 1, 2005 EXPIRATION WITHOUT PTA OCT. 6, 1997 CONTINUATION IN PART Patent Litigation 88 | Weil, Gotshal & Manges LLP
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