Ways to Avoid Having your Patents Cellected*

Xiaoguang Michelle Gao, Associate VP - Assistant General Patent Counsel , Eli Lilly and Company, 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.

Dr. Gao is Assistant General Patent Counsel at Eli Lilly and Company, supporting biologics and genetic medicine assets. She obtained her Ph.D. in Molecular Biology from Northwestern University, and J.D. from the University of Illinois. Prior to joining Eli Lilly, she was a Patent Attorney at Novartis Institutes for BioMedical Research, where she supported ImmunoOncology and Neuroscience programs. She also worked for Fish & Richardson as an associate, focusing her practice on biopharma-related patent prosecution and litigation there.

Lilly was founded in 1876 by Colonel Eli Lilly, a man committed to creating high-quality medicines that met real needs in an era of unreliable elixirs peddled by questionable characters. His charge to the generations of employees who have followed was this: "Take what you find here and make it better and better." More than 145 years later, we remain committed to his vision through every aspect of our business and the people we serve starting with those who take our medicines, and extending to health care professionals, employees and the communities in which we live.