USPTO Issues Precedential Decision Expanding Obviousness-Type Double Patenting

The Decision 

Following the Board’s November 8, 2024 decision reversing the Examiner’s OTDP rejections of claims 1-18 of U.S. Application No. 17/135,529 (the ’529 Application), the patent application at issue in Ex parte Baurin, the Examiner filed a request for rehearing. On March 5, 2026, USPTO Director Squires convened the ARP and granted sua sponte rehearing. Eleven amicus briefs were entered into the record on April 1, 2026. 

The application at issue (the ’529 Application) claims a priority date of March 28, 2012, and a natural expiration of March 28, 2032. The primary OTDP reference — U.S. Patent No. 10,882,922 — has a later patent term filing date of April 13, 2017, and expires April 13, 2037. The Examiner found, without counterargument from the Applicant, that pending claims 1–18 would have been obvious over the ’922 patent’s claims, but not vice versa. The Examiner cited the risk of separate ownership and the anti-harassment rationale as support for the OTDP rejections on appeal.  The Board dismissed that rationale as immaterial.  

The Board had concluded that because the earlier-expiring pending application could not extend the life of the later-expiring reference patent, no OTDP concern existed. The ARP disagreed, holding that the Board erred in dismissing the anti-harassment rationale, which the Federal Circuit has repeatedly recognized as a policy justification underpinning OTDP. 

Two Rationales — Both Operative 

The ARP reaffirmed that OTDP rests on two independent grounds. As the Federal Circuit stated in In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013): “The first [justification] is to prevent unjustified timewise extension of the right to exclude.... The second rationale is to prevent multiple infringement suits by different assignees asserting essentially the same patented invention.” The Board had treated the second rationale as subordinate to the first; the ARP rejected that reading. 

Nevertheless, the ARP, while bound by Federal Circuit precedent, expressed a preference that, absent evidence of actual ownership splitting and harassment, the risk of hypothetical harassment should not stand alone as an OTDP basis during examination. The panel warned that doing so could discourage improving existing technologies and collaborative research, and that the anti-harassment rationale is “more theory than real,” inviting the Federal Circuit to clarify whether it applies absent a term-extension concern.  

Allergan's Narrow Scope 

The Federal Circuit’s Allergan decision held 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.” The ARP clarified that this exception requires all three conditions simultaneously (first actual filing, first issuance, and a common priority date) and instructed examiners to continue pre-Allergan OTDP practice under MPEP § 804 except in the narrow circumstance where the application and reference share the same patent term filing date and the claims are first-filed, first-issued, and later-expiring. That scenario will rarely arise in original examination. 

A Proposed Framework (Contingent on Federal Circuit Guidance) 

The ARP proposed that examiners use patent term filing dates as a surrogate for expiration dates. If a putative OTDP reference has a later patent term filing date than the application under examination, the OTDP analysis under a term-extension rationale ends.  

Within the same patent family, applications with later actual filing dates can be rejected for OTDP over earlier-filed parents, but not vice versa.  

The ARP also expressed a preference — though bound by current Federal Circuit precedent — that absent evidence of actual ownership splitting and harassment, the risk of hypothetical harassment should not form a standalone basis for OTDP rejections during examination. 

The divergence between the ARP’s and the Director’s positions on the anti-harassment rationale reflects a notable split within the agency itself, and Crowell will continue to monitor and report on the Federal Circuit’s anticipated resolution on this issue. 

Practical Considerations 

• Audit continuation families. Identify pending applications with earlier patent term filing dates whose claims may be obvious variants of later-issued, later-expiring family members or related patents. 
• Reassess terminal disclaimer strategy — but defer where possible. Terminal disclaimers preclude patent term extensions and tie enforceability to continued common ownership, which carries significant risk in M&A and licensing contexts. Consider whether amending claims to achieve patentable distinction is preferable. 
• Review cross-company and collaborative IP. Assess whether any co-inventor holds or has filed patents at a different entity that could serve as an OTDP reference. Include OTDP representations and warranties in patent acquisition agreements. 
• Consider appeal options and strategic timing.  Applicants facing OTDP rejections grounded solely in the anti-harassment rationale — with no term-extension concern — may defer the filing of a terminal disclaimer or consider challenging the rejection. The Federal Circuit’s forthcoming decision in In re: Ablynx N.V., Appeal No. 26-1333, may provide further guidance. 
• Monitor examiner practice. Expect examiners to compare patent term filing dates more rigorously and to sustain anti-harassment-based OTDP rejections even where the pending application expires before the reference.