Squires Orders Appeals Panel to Review PTAB Rehearing Decision Reversing ODP Rejections

The U.S. Patent and Trademark Office (USPTO) announced Thursday that it will convene an Appeals Review Panel (ARP) to examine the issues raised by a 2025 rehearing decision of the Patent Trial and Appeal Board (PTAB) with respect to obviousness-type double patenting (ODP).

In Ex Parte Baurin, issued on December 18, 2025, the PTAB denied an examiner’s request for reconsideration of the Board’s November 8, 2024, decision reversing the examiner’s ODP rejections of several claims of U.S. Application No. 17/135,529, directed to antibody-like binding proteins. The Board found that the reference patent the examiner relied upon for its ODP analysis, U.S. Patent No. 10,882,922, was not a proper ODP reference because it was later filed and later expiring than the application in the present case.

The examiner requested rehearing based on the argument that the Board “misapprehended” the holding in Allergan USA, Inc. v. MSN Labs. (Fed. Cir. 2024). In Allergan, the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision 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” under the judicially-created doctrine of ODP. In so ruling, the CAFC distinguished In re Cellect, explaining that Cellect answered a different question than the one at issue in Allergan, “namely, under what circumstances can a claim properly serve as an ODP reference”?

The examiner in Ex Parte Baurin argued that, while the claims of the ‘922 reference patent and the claims in the application were not identical, they are not patentably distinct and the application’s claims would have been an obvious alternative to a skilled artisan. The applicant countered that the ‘922 reference patent does not qualify as a proper ODP reference because the application’s claims have a filing date of March 28, 2012, corresponding to the filing date of U.S. Application No. 13/433,033, while the ‘922 patent has a filing date of April 13, 2017, corresponding to the filing date of U.S. Application No. 15/487, 243. And with respect to expiration dates, due to terminal disclaimers filed with the Ex parte Baurin application, “any patent issuing from the instant application cannot extend beyond March 28, 2032,” while the ‘922 patent “has a 20-year statutory term that ends on April 13, 2037 and received 70 days of PTA.”

The PTAB ultimately agreed with the appellant again on rehearing, noting that, “[w]hile the facts of Allergan are somewhat different than here because the ‘922 patent and the application before us do not share a priority date or even stem from the same application family, we find the reasoning compelling.” The Board also rejected the examiner’s policy-based arguments about future separate ownership or withdrawal of terminal disclaimers as insufficient to support an ODP rejection and irrelevant where the ODP reference is not proper. “While there may be a policy concern of risk of separate ownership underlying the non-alienation provision for terminal disclaimers, 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,” wrote the PTAB in its rehearing decision. Administrative Patent Judge (APJ) Donald Adams dissented from the rehearing decision, largely agreeing with the arguments set forth in the Request for Rehearing.

The order issued by USPTO Director John Squires yesterday grants sua sponte rehearing to address issues raised by the December rehearing decision. The ARP will consist of Squires, the Acting Commissioner for Patents and the PTAB’s Chief APJ.  The order also permits amici to weigh in by Marh 27, and noted that the following information would be particularly beneficial to the review:

“1) the applicability, if any, of Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024), to the facts of this appeal, and consideration of what constitutes “first-filed” for OTDP purposes under facts different than those presented in Allergan;

(2) whether examiners should determine projected expiration dates to support OTDP rejections during prosecution; and

(3) 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.”