The doctrine of obviousness-type double patenting (“OTDP”) is one of the most complicated aspects of U.S. patent law. Recent Federal Circuit decisions have addressed specific OTDP issues, but tension between competing objectives of this judge-made doctrine leave many open questions. Current USPTO leadership has not proposed new rules that would change how the Examining Corps applies the doctrine, but ex parte decisions by the USPTO Patent Trial and Appeal Board (PTAB) seem to reflect a willingness to hold examiners to the current state of the law.
OTDP Rejections Require a Reasoned Analysis
In Ex parte Mobile Tech, Inc., Appeal 2022-001034 (Reexamination Control 90/014,363) (decided Feb. 11, 2022), the PTAB reversed four OTDP rejections where the Examiner had not provided “an explanation … … to substantiate the Examiner’s conclusion” that the claims on appeal were obvious in view of the cited claims. The Office Action provided a claim chart aligning claim limitations, but did not address textual differences between the pending claims and the cited claims.
In reversing the rejections, the PTAB explained:
[W]here, as here, the Examiner’s rejection fails to (1) articulate any analysis apart from merely quoting the language of the relied-upon claims; (2) acknowledge the differences in that language; and (3) explain why those differences would have been obvious to ordinarily skilled artisans, the Examiner has not established non-statutory double patenting on this record. The rejection is, therefore, erroneous for that reason alone.
Later-Filed, Later-Expiring Patents Are Not Proper OTDP References
In Ex parte Baurin, Appeal 2024-002920, (Application No. 17/135,529) (decided Nov. 11, 2024) (reh’g denied Dec. 18, 2025), the PTAB reversed five OTDP rejections that cited later-filed, later-expiring patents as OTDP references and reversed a provisional OTDP rejection over a later-filed pending application with a later patent term filing date, finding that the later-expiring patents/application were not proper OTDP references.
The PTAB cited the Federal Circuit decision in Allergan USA, Inc. v. MSN Labs. Private LTD., 111 F.4th 1358 (Fed. Cir. 2024), for the principal that the purpose of OTDP doctrine “‘is to prevent patentees from obtaining a second patent on a patentably indistinct invention to effectively extend the life of a first patent to that subject matter.’” The PTAB also considered the Federal Circuit decisions in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2014), and Abbvie v. Mathilda & Terrence Kennedy Institute, 764 F. 3d 1366 (Fed. Cir. 2014), and noted that in both cases the cited claims had an earlier filing date and earlier expiration date than the claims at issue. In contrast, the rejections on appeal relied on patents granted from later-filed applications with later expiration dates. Because they did not fit the Allergan paradigm, the rejections were reversed.
In a rare turn of events, the examiner filed a Request for Rehearing, arguing:
(1) the Board’s decision misapprehends the holding of Allergan;
(2) the Board’s decision is not consistent with USPTO guidance set forth in MPEP §§ 804 and 804.02; and
(3) the Board’s conclusion that the risk of separate ownership is “immaterial” … is not supported by case law or USPTO guidance.
A reconstituted PTAB panel denied the request for rehearing in a 2-1 decision, with the new panel member dissenting. As to point (1), the majority stood by its application of Allergan and rejected the Examiner’s attempts to limit it to its facts. As to point (2), the majority disagreed in some respects and emphasized that the MPEP “cannot create new law or ignore the law.” As to point (3), the majority found that the risk of separate ownership does not justify an OTDP rejection based on an improper reference patent.
Precedential Decisions Would Provide Clear Guidance
While these decisions are not precedential, I understand the PTAB Bar Association has asked Director Squires to designate both as precedential. Doing so would provide clear guidance to applicants and examiners, and promote consistency in examination of applications under this complex doctrine. In the meantime, Applicants faced with improper OTDP rejections can point to these decisions as informative, and consider appealing maintained rejections to the PTAB.
Attorneys at Foley have extensive experience counseling clients on OTDP issues in their own and competitor patent portfolios. Contact the author or your Foley attorney for more information.
