Appeal No. 2000-0002
Application 08/848,477
section beyond the expiration date specified in the
disclaimer.
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.
More significantly, however, is the fact that
obviousness-type double patenting is a judicially created
doctrine and we should, therefore, look to the courts for any
evidence that the courts have signaled the demise of the
doctrine. In a recently issued decision, Eli Lilly & Co. v.
Barr Laboratories, 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, of its own volition, held certain patent claims invalid
on the grounds of obviousness-type double patenting. In their
opinion, the court repeated its oft repeated rationale for the
doctrine as being "to prevent unjustified timewise extension
of the right to exclude granted by a patent." Lilly at 251
F.3d 967-68, 58 USPQ2d 1878.
There are other compelling reasons for continuing to
require the terminal disclaimer. First, as we have noted
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