Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 presented because (1) process protection was said not to be valuable until 1989 when
2 § 271(g) was enacted and (2) process claims were not patentable in the United States.
3 Appellants seem to be saying that because they could not have benefited from process
4 claims pre-1989, they were under no obligation to present process claims.
5 It may be fairly debatable whether any weight should be assigned to Mr. Usami’s
6 testimony. How relevant is it to any issue before us? To the extent that double patenting
7 ought to be based in whole or in part on equitable, as opposed to wholly legal,
8 considerations, we would find that Mr. Usami’s declaration amounts to an “excuse” but
9 not a “justification” for the delay in presenting the process claims on appeal. Appellants'
10 delay in seeking process protection has extended in part the 1998 expiration date of
11 Ochiai ‘606 until 2013, all because Takeda did not diligently pursuant its right to a
12 process patent.
13 It is true that § 271(g) made process claims more valuable. Tr-25:6-13.
14 However, Congress has long authorized inventors to apply for patents on processes.
15 35 U.S.C. § 101. Moreover, the law encourages individuals to diligently seek to protect
16 their “rights” and not delay to the prejudice of others. The "others" in this case is the
17 public.
18 It is also true that In re Larsen and some of its progeny could have been viewed as
19 discouraging inventors to seek certain process claims. Tr-10:2-5. Included among the
20 progeny is In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985). Tr-10:3.
21 Notwithstanding the 1985 Durden decision, Edwin P. Pleuddemann and his assignee
22 Dow Corning Corporation, applied for a process patent on 14 October 1986, as a division
23 of a product patent filed on 29 November 1985. Unlike Ochiai and Takeda,
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