Squires Issues Precedential Decision Clarifying Obviousness-Type Double Patenting Rejections

On August 8, the United States Patent Trial and Appeal Board designated as precedential Ex parte Baurin, Appeal No. 2024-002920 (ARP Aug. 6, 2026). The decision, which issued following a sua sponte rehearing by the Appeals Review Panel (ARP), affirmed the Examiner’s obviousness-type double patenting (OTDP) rejection upon finding that the Board “erred in dismissing the anti-harassment rationale as inadequate to support the Examiner’s OTDP rejections.” The decision also provides “Guidance to USPTO Personnel” on how to conduct OTDP analysis, including how to apply the Federal Circuit’s analysis in Allergan.

Background

On March 5, 2026, Director Squires convened an ARP and ordered sua sponte rehearing to review the Board’s appeal decision reversing OTDP rejections of various claims of US Application 17/135,529 (the ’529 application) over reference patent US 10,882,922 (the ’922 patent). During the appeal, the Board reasoned that OTDP did not apply because “any claims issuing from the ’529 Application” would expire “well before the expiration of the ’922 patent claims.” In response to the Examiner’s argument that the OTDP rejection was proper in light of the “risk of separate ownership” and harassment, the Board rejected the proposition that the anti-harassment rationale “is a stand-alone justification” for upholding the OTDP rejection.

To inform their decision, the ARP authorized amici curiae and supplemental briefing to address, among other things, (1) whether the Allergan OTDP exception—that “a first-filed, first issued, later-expiring claim cannot be invalidated by a later-filed, later issued, earlier-expiring reference claim having a common priority date”—applied to the facts on appeal, and (2) whether the risk of separate ownership and preventing potential harassment by separate owners of claims to obvious variants of an invention is an independent basis that supports an OTDP rejection during prosecution.

Holding

The ARP reversed the Board’s decision and reinstated the Examiner’s OTDP rejection. The ARP explained that binding Federal Circuit precedent provides two rationales for OTDP: (1) “preventing unjustified timewise extension of a patent’s term” and (2) “preventing harassment from separate lawsuits brought by multiple assignees asserting patents covering the same invention or obvious variants thereof.”

Regarding Allergan, the ARP found that its “OTDP exception” did not apply because the ’529 application was not “first-filed” or “first issued” with respect to the ’922 patent. Nor did the ’529 application and ’922 patent have a “common priority date.”

Thus, the ARP concluded that precedent “compelled” them “to reverse the Board and sustain the rejections for OTDP on appeal.” The ARP further noted that if it wasn’t “bound by the Federal Circuit’s precedents applying the OTDP anti-harassment rationale, this ARP would clarify that the risk of separate ownership and hypothetical harassment generally should not form a standalone basis for OTDP rejections during examination.”

OTDP Guidance

The ARP advises that “USPTO personnel should continue to follow existing pre-Allergan OTDP practice… unless a determination is made that the holding of Allergan applies” and that such situations are most likely to arise during reexamination or in an application for reissue. Allergan “will rarely, if ever, arise in original examination because a patent examiner will rarely, if ever, be in a position to determine that the claims under examination will be first-filed, first-issued, and later-expiring claims.”