Are Court-Created Patent Laws a Drag on the U.S. Patent System?

Patent eligibility (§101) and obviousness-type double patenting (ODP) share a common feature: both were built almost entirely by courts, not Congress. This distinction is increasingly cited in debates over U.S. patent competitiveness.

A recent IPWatchdog, Inc analysis by Sherry Knowles and Anthony Prosser ties these doctrines to the U.S.'s lower score in the patentability requirements category of the 2026 U.S. Chamber International IP Index — even as the U.S. holds its #1 overall ranking. Their argument: these court-created features impose costs on U.S. applicants that peer systems don't share.

The Laws at Issue

  1. ODP bars a patent holder from getting multiple patents on obvious variations of the same invention. While aiming to prevent patent owners from stretching exclusivity past a first patent's expiration through later, overlapping claims, ODP can trigger rejections across an entire patent family.
  2. Terminal disclaimers, the standard fix for ODP rejections, imposes term limits and common-ownership restrictions. These have a statutory anchor (35 U.S.C. § 253), but their use produces effects the authors call unusual internationally.
  3. §101 eligibility, built through a line of Supreme Court decisions, applies categorical exclusions critics argue have outgrown the statutory text.

These doctrines, though, were crafted to address real problems: ODP prevents undue extension of monopoly rights; terminal disclaimers are a voluntary tool that lets applicants keep prosecution moving; and §101 keeps abstract ideas and natural laws in the public domain for others to build on.

AI Is Sharpening the Stakes

USPTO examiners have reportedly run SimSearch, a similarity-detection tool, since late 2025, and ODP scrutiny in pharma and biotech has risen sharply; some office actions now devote pages to these rejections alone.

Developments to Watch

The ETHIC Act (H.R. 3269 / S. 2276) would group commonly-owned, terminally-disclaimed patents into one "Patent Group" for Hatch-Waxman and biosimilar suits, capping holders at one assertable patent per group, a direct hit on the terminal disclaimer mechanism.

Two ODP cases test similar ground: in Ex parte Baurin, the PTAB found later-filed, later-expiring reference patents couldn't support an ODP rejection, prompting Director Squires to convene an Appeals Review Panel for rehearing. In re Ablynx, with similar facts but the opposite outcome, is now before the Federal Circuit (Director's brief due August 7). Both test whether ODP reaches later-filed references absent any actual term extension, with the outcome set to reshape continuation strategy.

This debate isn't going away, and AI-assisted examination will only surface more of these tensions. Expect ODP and §101 scrutiny to intensify before any legislative or judicial fix arrives.