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Enforceability Period of Patents

Recently the Court of Appeals for the Federal Circuit considered an appeal involving the length of time that a patent should be able to be enforced. Immunex and Roche v. Sandoz, (Fed. Cir. 2020). The fact pattern is fairly unique but essentially Immunex (Amgen) asserted patent rights against Sandoz as an exclusive licensee of a patent owned by Roche. Immunex intentionally acquired a license rather than an outright assignment of patent rights from Roche. Sandoz complained that the patent should not be enforceable against it because the patent claims were too much like patent claims of an expired patent owned by Immunex. Sandoz relies upon an Obviousness type Double Patenting argument. However, because Immunex obtained an exclusive license rather than an assignment of rights, the Court agreed that Immunex has successfully avoided potential double patenting arguments. The takeaway: if you're considering licensing or obtaining patent rights from another patent owner there may be strategic reasons to only acquire a license rather than obtaining outright ownership of patent rights.

This case will likely be petitioned for Supreme Court review - stay tuned.

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