Ways to Avoid Having your Patents Cellected*

Michelle E. O’Brien, Partner, Marbury Law Group, USA

The Court of Appeals for the Federal Circuit caused frustrations when it decided to affirm the U.S. Patent Office’s findings that claims in four patents were unpatentable because they are not patentably distinct from claims in other patents in the same family. In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023). In view of the oral argument, the outcome of this case was virtually certain. The issue before the court was, at its core, a straightforward one—was the decision by the Patent Trial and Appeal Board (PTAB) finding the challenged claims unpatentable for obviousness-type double patenting (ODP) to be affirmed? In the appeal, the court noted that for the first time, it was addressing how a statutorily authorized extension, Patent Term Adjustment (PTA), interacts with ODP.

Michelle E. O’Brien has more than 20 years of experience representing both domestic and foreign clients of all sizes in the areas of patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of Ms. O’Brien’s technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products including new chemical entities and formulations, as well as novel solid forms including polymorphs, cocrystals, and amorphous forms of compounds. Ms. O’Brien’s expertise includes all aspects of preparing and prosecuting U.S. and foreign patent applications, such as patent drafting and prosecution, as well as more complex matters such as reissue and reexamination proceedings, appeals hearings, Post-Grant Reviews (PGR), and Inter Partes Reviews (IPR) before the Patent Trial and Appeal Board (PTAB). Her litigation expertise focuses on patent infringement cases including, for example, Hatch-Waxman litigation involving Abbreviated New Drug Applications, and includes all stages from pre-discovery through trial. Ms. O’Brien’s current practice includes building and maintaining clients’ patent portfolios, as well as analyzing competitors’ patent portfolios, preparing patentability, validity, and infringement opinions, conducting pre-litigation and product-clearance analyses, challenging and defending patents in post-grant proceedings before the PTAB (PGRs and IPRs), and litigating patent infringement lawsuits. Ms. O’Brien also provides pre-litigation counseling to clients in order to maximize the value of their patent portfolios and avoid the valid rights of others, relying on her broad background and extensive experience. Ms. O’Brien also lectures both domestically and abroad on various patent law topics, such as inventorship, inequitable conduct, Patent Term Extension (PTE) and Patent Term Adjustment (PTA), and patenting and litigating solid forms of compounds.