Appeal 2007-0393
Reexamination Control 90/006,786
Patent 6,497,843
1 period that said patent is commonly owned with the . . . patent which formed
2 the basis for the judicially created double patenting.” 37 CFR § 1.321(c)(3).
3 Analysis - Common Ownership
4 Section 1.321(c)(3) of 37 CFR requires a terminal disclaimer filed to
5 overcome an obvious-type double patenting rejection include a statement
6 that the patent shall be enforceable only as long as both patents are
7 commonly assigned. This requirement reflects a concern that issuing patents
8 on patentably indistinct inventions to separate patent owners may subject a
9 purported infringer to harassment by multiple suits. In re Van Ornum, 686
10 F.2d 937, 945, 214 USPQ 761, 768 (CCPA 1982) (upholding the PTO's non-
11 alienation requirement in former 37 CFR § 1.321(b)). Strong policies
12 dictated the creation of this principle governing the co-expiration and co-
13 ownership of sufficiently related patents. Pharmacia Corp. v. Par
14 Pharmaceutical Inc., 417 F.3d 1369, 1374, 75 USPQ2d 1949, 1953 (Fed.
15 Cir. 2005), citing In re Griswold, 365 F.2d 834, 150 USPQ 804, (CCPA
16 1966) (noting the co-ownership requirement is a creative solution to
17 potential harassment suits from two separate patents). Indeed, the regulatory
18 history of § 1.321 shows that the common ownership provision was added to
19 specifically address the potential harassment of possible infringers by
20 multiple suits:
21 This provision would prevent harassment of an alleged
22 infringer by multiple parties due to subsequent different
23 ownership of multiple patents granted as the result of
24 filing a terminal disclaimer to overcome a double
25 patenting rejection.
26 Notice of Proposed Rule Making, Conflicting Claims, 35 Fed. Reg. 20011,
27 20012 (December 31, 1970). The requirement for common ownership was
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