USPTO Appeals Review Panel Reaffirms Broad Reach of Double Patenting Doctrine

In a recent sua sponte rehearing decision from the United States Patent and Trademark Office’s Appeals Review Panel (ARP), it reversed an earlier Patent Trial and Appeal Board decision and held that obviousness-type double patenting (OTDP) may remain a concern even when a challenged patent would expire before the patent used as the OTDP reference.

Summary of the Decision

The application at issue claimed antibody-like binding proteins and claimed priority to a non-provisional filed 28 March 2012. Any resulting patent would ordinarily expire in 2032 without term adjustment or extension. The principal reference patent, U.S. Patent No. 10,882,922 (the ’922 patent), had a 13 April 2017 patent-term filing date and would expire in 2037, plus 70 days of patent term adjustment. The examiner found—and patent owner did not dispute—that the pending claims were obvious over the ’922 patent’s claims in view of an additional reference.

The Board initially reversed the examiner, finding that the pending claims, if issued, would expire before the ’922 patent’s claims and therefore would not improperly extend exclusivity. The ARP reversed the Board, finding that that avoiding an unjustified term extension is not OTDP’s only rationale. It noted that preventing harassment from separate lawsuits brought by multiple assignees asserting patents covering the same invention or obvious variants thereof is another rational for OTDP. The ARP found that the Board erred by treating this anti-harassment rational as immaterial.

The ARP also rejected patent owner’s reliance on Allergan USA, Inc. v. MSN Laboratories Private Ltd. In the panel’s view, Allergan protects a narrow category of claims: first-filed, first-issued, later-expiring claims challenged by later-filed, later-issued, earlier-expiring claims within a family sharing the same patent-term filing date. Patent owner’s pending application did not satisfy those conditions because it was neither the first actual filing in its family nor an issued patent, and it had a different patent-term filing date from the ’922 patent.

The ARP suggested that, if the Federal Circuit clarifies that anti-harassment cannot independently support OTDP, examination should focus principally on known patent-term filing dates rather than speculative future expiration dates. Until such clarification, USPTO personnel must continue existing pre-Allergan practice, except where Allergan’s specific requirements are met.

Practical Takeaway

Practitioners cannot limit an OTDP analysis to whether a challenged patent would improperly extend the term of exclusivity. Even when the challenged claims would expire before the reference patent, the USPTO may still rely on the separate anti-harassment rationale. Accordingly, the absence of a timewise extension does not, by itself, eliminate OTDP risk.

Before filing or prosecuting related applications, practitioners should evaluate both rationales. If an OTDP rejection appears likely, counsel should evaluate claim amendments, evidence of patentable distinctness, and a terminal disclaimer. Applicants relying on Allergan should create a clear record establishing its specific requirements. Until the Federal Circuit provides further guidance, prosecution strategy must account for both term extension and anti-harassment rather than treating expiration dates as dispositive.

By Jason Engel, Erik Halverson and Kahlan Noel