USPTO Convenes Appeals Review Panel to Reconsider Obviousness-Type Double Patenting
OTDP with an unrelated, later-filed patent?
On March 5, 2026, IP owners and counsel were surprised with an announcement regarding obviousness-type double patenting (OTDP). United States Patent and Trademark Office (USPTO) Director John A. Squires issued an order convening an Appeals Review Panel (ARP) to reconsider the Patent Trial and Appeal Board (PTAB) decision in Ex parte Baurin, Appeal 2024-002920 (ARP Order, p. 1).
The panel, consisting of Director Squires, Acting Commissioner for Patents Valencia Martin Wallace, and Chief Administrative Patent Judge Kalyan K. Deshpande, granted rehearing sua sponte to review the PTAB’s reversal of an examiner’s OTDP rejections for claims 1-18 (ARP Order, pp. 1-2). This rare intervention underscores the pressing need for unified Office guidance on how examiners should apply the Federal Circuit’s Allergan decision during active prosecution.
By taking up this case, Director Squires likely intends to resolve lingering ambiguities surrounding “first-filed” patent status, projected expiration dates, and the risks of separate ownership before these issues create widespread unpredictability for patent applicants. The Office authorized the appellant and any amicus curiae to submit briefs limited to ten pages by March 27, 2026 (ARP Order, p. 2).
The real question, however, should likely be whether OTDP applies at all here when the patents do not even share a priority date or belong to the same application family. Anyone who has felt pressure to file a terminal disclaimer (and its associated fee) to overcome an OTDP may feel a certain way when reading this.
The Procedural Framework of the Appeals Review Panel
Practitioners evaluating this sua sponte review can look to the structural guidelines of the ARP. The USPTO established the ARP on July 24, 2023, replacing the former Precedential Opinion Panel process (Appeals Review Panel). The Director holds the sole discretion to convene the ARP sua sponte to review decisions in ex parte appeals, reexamination appeals, and reissue appeals. The Office does not accept requests for ARP review from outside parties (ARP info).
By default, the ARP consists of the Director, the Commissioner for Patents, and the Chief Judge of the PTAB (ARP info). In the event of a conflict of interest, members recuse themselves following guidance in the Standards of Ethical Conduct for Employees of the Executive Branch at 5 C.F.R. Part 2635 and the PTAB’s Standard Operating Procedure 1 (ARP info).
Decisions from the ARP aim for completion within three months and are treated as routine decisions under Standard Operating Procedure 2, Revision 11, subject to potential nomination for precedential or informative designation later.
Appellants cannot request rehearing of ARP decisions; they seek judicial review at the United States Court of Appeals for the Federal Circuit or the United States District Court for the Eastern District of Virginia.
The Precedent: Allergan v. MSN Laboratories
The Federal Circuit’s 2024 decision in Allergan USA, Inc. v. MSN Laboratories Private Ltd. helped to shape double patenting analyses by holding that a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim sharing a common priority date (Allergan, p. 17).
The court emphasized that the primary purpose of the obviousness-type double patenting doctrine is to prevent patentees from obtaining a second patent on an indistinct invention to improperly extend the life of a first patent (Allergan, p. 16).
Generally, applicants file a terminal disclaimer (and fee) to resolve OTDP concerns, and the term of the later-filed application is tied to the expiration date of the earlier-filed application.
In Allergan, the court found that a first-filed and first-issued patent establishes the maximum period of exclusivity for the claimed subject matter and any obvious variants (Allergan, p. 17).
This ruling provides protection for patent owners against invalidation of their original patents due to administrative delays, though it leaves open questions regarding how these principles apply under differing factual scenarios (Allergan, p. 15).
Background: The Appeal and the PTAB’s Rehearing Denial
The core dispute in Ex parte Baurin relates to the proper application of OTDP references under recent Federal Circuit jurisprudence. In the underlying appeal, the claims at issue were directed to dual variable region antibody-like binding proteins having a cross-over binding region orientation (Appeal, p. 2).
The examiner rejected the claims for nonstatutory double patenting over multiple reference patents, including U.S. Patent 10,882,922, arguing that the claimed bispecific constructs were obvious alternatives to the reference’s trispecific constructs (Appeal, pp. 4-5).
The appellant successfully argued that the ‘922 patent did not qualify as a proper reference because it had a later filing date (April 13, 2017 versus March 28, 2012) and would expire later than the pending application, which was capped at March 28, 2032, due to terminal disclaimers (Appeal, pp. 6-7). The PTAB agreed, noting that the facts presented a critical difference from prior cases like Gilead and Abbvie, where reference claims had earlier filing and expiration dates (Appeal, p. 9).
While acknowledging that the ‘922 patent and the application on appeal do not share a priority date or stem from the same application family, the PTAB still found the Allergan reasoning compelling (Appeal, p. 9).
Relying on that reasoning, the PTAB determined that the pending application constituted the first patent to cover the claimed invention, not a “second, later expiring patent” that would improperly extend exclusivity (Appeal, pp. 10-11). Therefore, the PTAB originally reversed the examiner’s rejections (Appeal, p. 11).
Following this reversal, the examiner filed a Request for Rehearing, arguing the PTAB misapprehended the holding of Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024) (PTAB Rehearing Decision, p. 4). The examiner asserted that Allergan applies to an analysis that “takes into consideration only the actual filing dates of the alleged reference patent and the patent or patent application at issue to determine what patent is the first patent of the patent family” (PTAB Decision, p. 4).
The PTAB denied the examiner’s request for rehearing on December 18, 2025, finding no misapplication of the law (PTAB Decision, pp. 1-3). The PTAB noted the Federal Circuit in Allergan made clear that “both effective filing dates and expiration dates are to be considered in determining whether claims are proper reference patents” (PTAB Decision, p. 4).
Quoting Allergan, the PTAB repeated: “The doctrine’s primary goal is to prevent an unjustified timewise extension of patent exclusivity beyond the life of a patent” (PTAB Decision, p. 7).
The examiner admitted during prosecution that the claims of the later-filed, now-issued reference patents were non-obvious over the instant application’s disclosure (PTAB Decision, p. 9). The application published before the earliest effective filing date of the reference patent (PTAB Decision, p. 9).
The PTAB concluded that the reference patent claims were directed to inventions that could not be claimed in the pending application (PTAB Decision, p. 9). Relying on Allergan, the PTAB held that preventing an unwarranted extension of patent term for a first-filed invention applies even without the claims at issue and the reference claims sharing a common priority date (PTAB Decision, p. 10).
Examining Expiration Dates During Prosecution
The examiner argued the PTAB’s original decision conflicted with Manual of Patent Examining Procedure (MPEP) § 804, suggesting the MPEP “does not instruct examiners to compare filing dates and expiration dates, as a threshold question” (PTAB Decision, p. 12).
The PTAB countered that the MPEP is a guidance document that “does not have the force and effect of law” (PTAB Decision, p. 12).
The PTAB stated that determining if an unjustified term extension exists requires a comparison of expiration dates and filing dates (PTAB Decision, p. 13).
The PTAB recognized that exact expiration dates might remain undetermined for a pending application awaiting patent term extension (PTE) or patent term adjustment (PTA) awards; an examiner “can determine the apparent expiration date” based on the statutory term of 20 years from the earliest effective filing date, shortened by any terminal disclaimers (PTAB Decision, p. 15).
This sounds like an instruction to ensure the application and reference in question share a priority date, no?
The Risk of Separate Ownership
Another point of contention involves the risk of divided ownership. The examiner argued that In re Cellect identified the risk of separate ownership as a valid reason to uphold double patenting rejections (PTAB Decision, p. 17). The PTAB disagreed with this interpretation, clarifying that the Cellect court “did not, as the Examiner suggests, hold that the risk of separate ownership is a policy reason sufficient in and of itself to support an ODP rejection irrespective of whether the references are proper ODP references” (PTAB Decision, p. 18).
The PTAB dismissed the examiner’s reliance on In re Hubbell and In re Fallaux (PTAB Decision, pp. 18-23). The PTAB noted that in Hubbell, there was no dispute that the reference patent was filed prior to the application at issue (PTAB Decision, p. 18). The PTAB characterized statements regarding a harassment justification for OTDP in Fallaux as “dicta at best” (PTAB Decision, p. 23).
The PTAB concluded that “no court has held that risk of common ownership is a sole justification for upholding an ODP rejection that is not based on a proper reference patent” (PTAB Decision, p. 24).
The Directives for Amicus Briefing
Director Squires’ Order identified three focal points for the upcoming March 27, 2026 amicus briefs (ARP Order, p. 2). The ARP seeks specific analysis on:
The applicability of Allergan to the facts of Ex parte Baurin and the definition of “first-filed” for OTDP purposes under facts differing from Allergan (ARP Order, p. 2).
Whether examiners should determine projected expiration dates to support OTDP rejections during prosecution (ARP Order, p. 2).
Whether the risk of separate ownership and the prevention of potential harassment by separate owners of obvious variants forms an independent basis supporting an OTDP rejection during prosecution (ARP Order, p. 2).
Thoughts & Considerations
Establishing a unified USPTO position on Allergan offers predictability for patent practitioners and applicants. If the ARP determines that examiners must calculate projected expiration dates, applicants might experience a reduction in speculative OTDP rejections based solely on related families without regard to actual term extensions. Clarifying if the risk of separate ownership acts as an independent justification provides concrete guidance for filing terminal disclaimers.
Calculating projected expiration dates during active prosecution introduces administrative hurdles. Final patent term adjustments and patent term extensions remain unknown until prosecution concludes. Relying on apparent statutory terms based on effective filing dates requires examiners to predict future administrative outcomes accurately.
A rigid formulation of what constitutes a first-filed patent could inadvertently penalize inventors for routine examination delays. If the ARP concludes that the risk of separate ownership acts as an independent justification for OTDP rejections, practitioners might face heightened requirements to file terminal disclaimers, truncating valid patent terms to avoid perceived harassment concerns.
Broad policy changes enacted through the ARP mechanism could prompt an increase in federal litigation as affected parties seek judicial review of the Office’s boundaries. For instance, if the ARP determines Allergan and Baurin are too dissimilar, and there is no decent precedential guidance, the door to adverse judicial intervention could be widened.
Conclusion
The convening of the Appeals Review Panel in Ex parte Baurin signals the USPTO’s intent to formalize procedural bounds for obviousness-type double patenting in view of evolving Federal Circuit precedent (ARP Order, p. 1).
The facts of this case feel like a “hostage” scenario for applicants. The examiner used later-filed patents, claiming priority to 2016 and 2017, to reject an earlier-filed application tracing back to 2011 (Appeal, pp. 6-7).
This raises a logical question: how can a 2011 invention be considered an “obvious” variant of a 2017 patent that did not exist at the time of the original filing, especially when the patents reside in entirely different families?
When examiners apply OTDP in this manner, applicants are forced to file terminal disclaimers to advance prosecution. This carries heavy burdens. The USPTO recently increased terminal disclaimer fees to a healthy $183.
Moreover, a terminal disclaimer irrevocably ties the life of the pending patent to the reference patent. Under some policy suggestions (and formerly proposed rules), if a reference patent expires early or faces validity challenges, the term of the earlier-filed invention could be prematurely cut short. The alternative is to argue any differentiation between claims on the record and risk future prosecution history estoppel.
The ARP should be forcefully affirming here is that OTDP does not apply at all—e.g., extorting a terminal disclaimer and its associated fee—when the patents do not even share a priority date or belong to the same application family. Hopefully, the patent bar will find some more appropriate case law on the subject.
The incoming amicus briefs and the ARP’s eventual ruling will dictate prosecution strategies regarding filing dates, expiration projections, and terminal disclaimers.
Patent practitioners, IP owners, and in-house counsel will monitor this proceeding, as the directives will directly influence patent portfolio architecture and term maximization.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.