Appeal No. 2003-0914 8
Application No. 09/192,713
Therefore, Congress has, in the providing for the amended statute, specifically provided for
in the statute the possibility of a terminal disclaimer being filed in an application filed on or
after June 8, 1995.
Of even greater significance, however, is the fact that obviousness-type double
patenting is a judicially created doctrine and we are therefore bound to look to our
reviewing court for any evidence that the court has signaled the demise of the doctrine. In
a recently issued decision, Eli Lily & Co., Inc. v Barr Labs., Inc., 251 F.3d 955,
58 USPQ2d 1869 (Fed. Cir. 2001), the court provided evidence in the strongest manner
imaginable that the doctrine was alive and well. The court held certain patent claims
invalid on the grounds of obviousness-type double patenting. In their opinion, the court
repeated its rationale for the doctrine as being, “to prevent unjustified timewise extension
of the right to exclude granted by a patent.” Lily at 251 F.3d 967-68, 58 USPQ2d
1878.
There are yet other compelling reasons for maintaining the requirement of a terminal
disclaimer. Initially, the patent term extension provisions of 35 U.S.C. § 154 do not
insure as the appellants have recognized, Brief, page 14, that any patent issuing on an
application filed on or after June 8, 1995, will necessarily expire 20 years from the earliest
filing date or from the earliest filing date for which benefit is claimed. Additionally, the
rules of 37 C.F.R. § 1.321 (c)(3) still require that a properly filed terminal disclaimer
include a statement that the patent and the application whose term is being disclaimed are
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