Squires Orders Rehearing to Address Obviousness-Type Double Patenting

Why It Matters

The rehearing could set precedent on how the USPTO evaluates OTDP references, directly influencing patent prosecution strategy and the scope of patent term extensions across the biotech sector.

Key Takeaways

• PTAB reversed OTDP rejections based on filing and expiration dates
• Squires ordered ARP rehearing to clarify “first‑filed” definition
• Examiner’s risk‑of‑separate‑ownership argument rejected as immaterial
• Potential guidance may affect future OTDP prosecution practices
• Amici briefs due March 27, 2026 could shape USPTO policy

Pulse Analysis

Obviousness‑type double patenting remains a nuanced doctrine that balances patent term protection against undue extension of exclusivity. The PTAB’s reversal in Ex Parte Baurin underscores a shift toward evaluating both effective filing dates and projected expiration dates, rather than relying solely on chronological filing order. By invoking the *Allergan* precedent, the board emphasized that a first‑filed invention should not be prolonged by a later‑filed, later‑expiring reference, reinforcing the policy goal of preventing strategic term extensions.

The examiner’s arguments—centered on the risk of separate ownership and adherence to MPEP guidance—were deemed immaterial because the reference patent failed the core OTDP test. This decision highlights a growing judicial reluctance to treat procedural guidance as determinative when statutory criteria are not met. For practitioners, the ruling signals that reliance on terminal disclaimers or speculative expiration calculations may no longer suffice to sustain OTDP rejections, prompting a more rigorous analysis of claim distinctness and filing chronology during prosecution.

Director Squires’ order to convene an Appeals Review Panel opens a critical window for stakeholders to shape future USPTO policy. The panel’s forthcoming guidance on what constitutes a “first‑filed” application and whether examiners must project expiration dates could standardize OTDP assessments across technology sectors. Industry participants, especially in biotech where patent lifespans are pivotal, should monitor the ARP’s deliberations and consider submitting amici briefs before the March 27 deadline to influence the evolving landscape of double‑patenting doctrine.