USPTO Appeals Review Panel Addresses Obviousness-Type Double Patenting in Ex Parte Baurin

On August 6, 2026, the Appeals Review Panel (“ARP”) issued a decision upon sua sponte rehearing of a prior Patent Trial and Appeal Board panel’s decision in Ex parte Baurin, Appeal 2024-002920. The USPTO Director designated this decision precedential on the same day.

Baurin is notable for rejecting the prior panel’s narrower reading of obviousness-type double patenting (“OTDP”) based on its understanding of the Federal Circuit’s decision in Allergan v. MSN Laboratories, 111 F.4th 1358 (Fed. Cir. 2024). The APR reversed the panel’s decision and determined (as the examiner had) that, under current binding Federal Circuit precedent overall, an “anti-harassment rationale” alone is a valid basis for applying OTDP. In other words, that rationale may apply, regardless of any patent expiration dates at issue.

Interestingly, the ARP questions the factual and policy underpinnings of the anti-harassment rationale. The decision also offers the ARP’s “thoughts” about a proposed “future framework” when examining OTDP, if the Federal Circuit later clarifies that the anti-harassment rationale cannot be a sole basis for OTDP after all. Thus, the APR appears to ask the Federal Circuit to come to a different conclusion in a future binding case. Until then, the ARP presents guidance regarding the USPTO’s current application of Allergan, consistent with its decision.

Case Background

The application at issue claimed priority to a March 28, 2012, filing date and therefore would expire in 2032, absent other factors that may affect patent term. The examiner rejected the claims for OTDP over several later-filed patents, including U.S. Patent No. 10,882,922 (the “reference” patent), which had a filing date of April 13, 2017, and would expire in 2037. The Board reversed the OTDP rejections, reasoning that issuance of the challenged claims could not result in an improper extension of patent term because any patent issuing from that application would expire years before the reference patent. Relying heavily on Allergan, the Board concluded that the later-filed, later-expiring patent could not serve as a proper OTDP reference.

Director Squires subsequently convened an ARP and granted sua sponte rehearing to address the Board’s decision.

The ARP’s Decision

The ARP reversed the Board and reinstated the examiner’s OTDP rejections.

The ARP first held that Allergan did not apply to the facts presented. The ARP characterized Allergan as applicable only if the challenged claims are “first-filed, first-issued, later-expiring” claims within the relevant patent family. In other words, Allergan’s exception to OTDP may only apply if the challenged claims are (i) in an application with the earliest “actual” filing date and (ii) in the earliest patent to issue—in relation to all other patent family members (in addition to a reference patent family member expiring earlier). Because those facts were not present in Baurin, the ARP declined to extend Allergan beyond its specific circumstances.

Second, the ARP held that the Board improperly treated prevention of improper patent-term extension as the sole rationale underlying OTDP. The ARP emphasized that Federal Circuit precedent recognizes two distinct rationales for OTDP rejections:

1. Preventing unjustified timewise extension of patent rights; and
2. Preventing harassment from the possibility of multiple infringement suits by different assignees asserted essentially the same patented invention, i.e., avoiding the “risk of separate ownership” that could allow for such harassment.

Relying on decisions including Fallaux, Hubbell, and Cellect, the ARP concluded that the anti-harassment rationale remains applicable under binding precedent and can support OTDP rejections even where no patent-term-extension concern exists. Accordingly, the ARP determined the Board erred in dismissing the possibility of future divided ownership as “immaterial.”

OTDP Policy Discussion and Proposed Framework

Although the ARP reversed the prior Board panel’s determination and sustained the examiner’s rejections, the decision contains an extensive discussion suggesting the USPTO Director may favor a more limited OTDP framework if the Federal Circuit provides additional guidance in the future in relation to the anti-harassment rationale.

In particular, the ARP observed:

• The importance of OTDP based on patent-term extension has diminished following the URAA’s adoption of a 20-year patent term. However, the OTDP doctrine continues to serve an important role in certain circumstances, including when two patents claiming the same invention are subject to different expiration dates, such as when the challenged and reference claims are filed as part of different patent families with different patent term filing dates or when a grant of patent term adjustment (“PTA”), based on Office delay during prosecution, results in related patents expiring at different times.[1]
• The anti-harassment rationale often relies on speculation concerning future ownership changes that may never occur.
• Applying OTDP based solely on hypothetical split ownership “discourages follow-on and inter-company collaborative research and may ultimately harm future innovation.”

The ARP suggested, if the Federal Circuit were to change or clarify its precedent in the future, OTDP examination might be better focused on actual patent-term-extension concerns. This could involve comparing relevant patent-term filing dates (i.e., effective filing dates) and considering whether an issued patent could extend exclusivity beyond the expiration of a “reference patent” in the family. This could occur, for example, if a patent has been granted PTA, or a reference patent’s term has been shortened due to a known terminal disclaimer.

The ARP further suggested that the standalone anti-harassment rationale could be circumscribed to mitigate potential unfairness to applicants and downstream harms to innovation. Specifically, assuming this rationale is not abandoned outright, the ARP suggested several possible options before the anti-harassment rationale alone could form a basis for OTDP:

• Requiring actual evidence of ownership splitting and resulting harassment.
• Applying a two-way obviousness analysis in certain situations, particularly where the claims do not arise from common ownership or complete overlap of inventors, to provide applicants with a fairer opportunity to overcome OTDP rejections.

The ARP also suggested the option of considering whether a third-party application (without common ownership or overlap of inventors) would issue as a patent under the same circumstances, and if so, not reject the claims for OTDP.

However, the ARP acknowledged that any such changes would require additional guidance because existing Federal Circuit precedent continues to recognize the anti-harassment rationale.

On that note, the ARP expressly stated “[i]f, contrary to our conclusion here, the Federal Circuit’s precedents should not be read as permitting OTDP rejections based on the anti-harassment rationale where no term-extension concern is apparent, the Office would welcome that clarification from the court.” In this context, the panel pointed to another case (In re Ablynx, Appeal No. 26-1333, also called Ex parte Baumeister) already pending at the Federal Circuit on this issue.

Current Guidance Regarding Allergan

In the meantime, the decision also provides immediate guidance to USPTO personnel regarding the Office’s application of Allergan:

1. Examiners should continue applying existing OTDP practice under MPEP § 804.
2. Allergan should be applied only in limited circumstances where (1) patents or applications in the same family share the same patent-term filing date; and (2) the claims under examination are “first-filed, first-issued, and later-expiring” within the family.

Key Takeaway

The decision signals that the USPTO currently views Allergan as a narrow exception under binding Federal Circuit case law rather than a broad reworking of OTDP doctrine. For now, examiners may continue to rely on the anti-harassment rationale in support of OTDP rejections even where a challenged patent would expire before the asserted reference patent.

[1] Patent Term Extension (“PTE”) (based on time lost during FDA regulatory review), unlike PTA, does not impact applicable expiration dates for OTDP. See Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367, 1373 (Fed. Cir. 2018).