Precedential ARP decision sustains obviousness-type double patenting rejections on anti-harassment rationale alone
On Aug 6, 2026, an Appeals Review Panel (ARP) in Ex parte Baurin reversed a PTAB decision and reinstated the examiner’s obviousness-type double patenting (ODP) rejection solely based on the anti-harassment rationale even absent an improper extension of patent term. The application at issue (17/135,529, the ’529 application) had an actual filing date of Dec. 28, 2020 and claimed a priority date of March 28, 2012 through a chain of continuation applications. The examiner had rejected its claims for ODP over six later-filed, later-expiring references, among which is the focus of the ARP, patent 10,882,922 B2 (the ’922 patent), which had a filing date of April 13, 2017, issuance date of Jan. 5, 2021, and expiration date of June 22, 2037. The applicant appealed to the PTAB, arguing that none of the cited patents qualified as proper ODP references as no improper extension of patent term would be possible due to later expiring of the references. The Board ruled for the applicant, reversing the ODP rejections relying on Allergan. Following unsuccessful rehearing requested by the examiner where the Board’s reaffirmed its reversal, the USPTO Director John A. Squires convened the ARP sua sponte to review the Board’s decision. The ARP addressed three questions: the applicability of Allergen, the appropriateness of predicting expiration dates in making ODP rejections, and the ability of anti-harassment rationale as standalone basis for supporting ODP rejections.
The ARP held that Allergan did not apply to the facts at hand. The Federal Circuit’s decision in Allergan required that a first-filed, first-issued, later-expiring claim not be invalidated by a later-filed, later-issued, earlier-expiring reference sharing a common priority date. The facts in Baurin did not satisfy the “first-filed” requirement by the ’529 application not being the first actual filing in its family and not having an actual filing date before the reference ’922 patent. Nor was the “first-issued” requirement satisfied as the ’529 application was still pending. The “common priority date” prong was also not met due to different patent term filing dates. The ARP next addressed the Board’s improper holding of the doctrine of ODP inapplicable without unjustified patent term extension, arguing that this effectively rules out the prevention of divided ownership and harassment by separate owners of obvious variants of the essentially the same invention against an accused infringer (the anti-harassment rationale) as a second justification for the doctrine, when the guidance in MPEP § 804(II)(B) expressly instructed the consideration of both rationales. Relying on Federal Circuit precedents in Fallaux, Hubbell, and Cellect, where the anti-harassment rationale have been repeatedly invoked to support the ODP rejection independently even when no patent-term-extension concern was present, the ARP reasoned that treating anti-harassment rationale as “immaterial” and these decisions as “dicta” would mean that the court affirmed the ODP rejections with no underlying rationale. Third, the ARP cautioned the examiners against speculating expiration dates by predictions, suggesting the use of patent term filing date as a practical surrogate instead.
Despite taking a stand in the importance of anti-harassment rationale in curbing ODP alone, the ARP welcomed further clarification in the issue from the Federal Circuit in the Ablynx (Ex parte Baumeister) case and proposed a possible framework for ODP under binding precedents without harming innovation. It was noted that despite the ODP’s diminishing contribution to check on improper timewise extension of patent rights post URAA (amendment to patent term calculation from 17 years from issue to 20 years from priority), the judicially created doctrine remains important in preventing patents of different patent families with different patent term filing dates from claiming the same invention, such as in Gilead. The ARP went on to confess a contradictory opinion were it not bound by precedents, that the anti-harassment rationale all builds upon a hypothetical scenario of splitting ownership that may never come, and thus should not form a freestanding basis for ODP rejection absent factual evidence. Grounding ODP rejections in speculation hypothetically protects the public from multiple lawsuits but in reality stifles innovation as a company’s own later improvement can end up invalidating its foundational patent. Under the proposed framework, the Office emphasizes the application of ODP to mitigate improper timewise extension of patent exclusivity as the primary rationale. The effective patent term filing dates of patents from different family should be relied upon as a surrogate measure to expiration dates to facilitate analysis consistent with the primary rationale, while actual filing dates of patents in the same family should be used in determining qualification of later-filed references as proper ODP references. The ARP additionally suggests the requirement of actual evidence of previous ownership splitting and harassment as a basis for ODP rejection and a two-way test by the examiner to illustrate obviousness of the rejected claims and the references over each other to make it fair for the applicant in overcoming the rejection.
The ARP decision updates the Office on the rubrics of carrying out ODP rejections pursuant to MPEP § 804 in view of Allergan, where routine ODP practice continues to reject claims as obvious over later-filed references unless exact mapping of Allergan facts of common priority date between the two and first-filed, first-issued, and later-expiring of the challenged claims can be established to obviate ODP rejections. The requirement on first-issued reads Allergan down to almost nothing as a pending application facing ODP rejection over issued references can never be “first-issued”. Apart from the nearly non-existent safe harbor of Allergan, anti-harassment rationale still stands alone in supporting ODP rejections, unless the Federal Circuit opines otherwise in the upcoming Ablynx case. The current ruling carries immediate impacts to life sciences industry where companies hold large portfolios of related patents and innovations take a long time to spawn, often resulting in obvious variants disclosed in continuing applications that remain pending when later-field applications mature into ODP references. Applicants are left to salvage the rejected claims by terminal disclaimer, which requires the challenged application and the references to be commonly owned. Where the challenged application would expire before the references, terminal disclaimer can give up no patent term and solely serve to prevent future splitting of ownership, precisely where the ARP reinforces the propriety of ODP rejection on anti-harassment rationale alone without unjustified patent term extension. In cases where there is no common ownership, i.e. only common inventors, as in collaborations or inventors moving to spin-out companies, anti-harassment rationale is implicated by separate owners and warrants ODP rejections, but the cure of terminal disclosure under 37 C.F.R. 1.321(c) now vanishes, creating asynchrony in problem and solution. Post-Baurin, biotechnology companies need to scrutinize their patenting strategies with respect to scope and timing to have a full set of claims early on and only distinct claims in continuations within a patent family, since later developments may become references against foundational patents. The risk is more serious in separately owned patents arising from collaboration and licensing where no terminal disclaimer is available.
