The United States Patent and Trademark Office’s Appeals Review Panel has reaffirmed that obviousness-type double patenting remains a concern even when a challenged patent expires before its reference patent.
The ARP issued its ruling via a sua sponte rehearing, reversing an earlier Patent Trial and Appeal Board decision that had narrowed the doctrine’s application.
The application at issue involved antibody-like binding proteins and claimed priority to a non-provisional application filed on March 28, 2012.
Any patent resulting from that application would ordinarily expire in 2032, absent any term adjustment or extension.
The principal reference patent was commonly owned by Sanofi, and the examiner had rejected the pending claims as obvious variants of that patent’s claims.
The Board initially sided with the patent owner, reasoning that claims expiring before the reference patent could not improperly extend exclusivity.
The ARP reversed that reasoning, finding that preventing unjustified term extension is not the only rationale underpinning the double patenting doctrine.
The panel held that preventing harassment through separate lawsuits brought by multiple assignees asserting patents covering the same invention is an independently sufficient rationale for applying the doctrine.
The ARP also rejected the patent owner’s reliance on the Federal Circuit’s decision in Allergan USA, Inc. v. MSN Laboratories Private Ltd., calling its application narrow and fact-specific.
In the panel’s view, Allergan protects only a narrow category of claims, specifically 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.
The ARP made clear that USPTO personnel must continue pre-Allergan examination practice except where Allergan’s specific and limited requirements are met.
The panel further suggested that, if the Federal Circuit clarifies that the anti-harassment rationale cannot independently support obviousness-type double patenting, examination should focus on known patent-term filing dates rather than speculative future expiration dates.
For practitioners, the ruling means an obviousness-type double patenting analysis cannot be limited to whether a challenged patent would improperly extend an exclusivity period.
Even where challenged claims would expire before the reference patent, the USPTO may still apply the anti-harassment rationale to sustain a double patenting rejection.
The absence of a timewise extension does not, by itself, eliminate obviousness-type double patenting risk under current USPTO practice.
Practitioners filing or prosecuting related applications should evaluate both rationales before proceeding, and those receiving a rejection should carefully assess whether Allergan’s narrow fact pattern applies.
Where Allergan does not apply, a terminal disclaimer may be the appropriate and practical route to overcome the rejection.