Scott Daniels | October 15, 2009
As we reported September 3, the PTO has rejected certain claims of Merck’s U.S. Patent No. 5,565,473 for SINGULAIR®.
Merck has now interviewed the examiner, indicating that it intends (1) to file a terminal disclaimer to deal with the double patenting rejection, and (2) to submit a declaration describing comparative experimental data to deal with the obviousness rejection.
This case illustrates one disadvantage of ex parte reexamination for requesters – the patentee may interview the examiner, whereas in inter partes reexamination, the patentee may not.