Gilead double patenting rule only applies to patents filed after URAA’s effective date

摘要

The federal district court in Wilmington, Delaware, erred by finding that a patent owned by Novartis AG, filed after the June 8, 1995 effective date of the Uruguay Round Agreements Act (URAA), was an invalidating obviousnesstype double patenting reference for a related patent which expired earlier, the U.S. Court of Appeals for the Federal Circuit has ruled. The court clarified that its prior opinion in Gilead Sciences, Inc. v. Natco Pharma Ltd.—holding that the expiration date is the benchmark of obviousness-type double patenting—is limited to the context when both patents in question are post-URAA patents. This case involved one pre-URAA patent and one post-URAA patent governed by different patent term statutory regimes. Under the circumstances, the correct framework was to apply the traditional pre-URAA framework and look to issuance date as the reference point for obviousness-type double patenting (Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, Inc., December 7, 2018, Chen, R.).