"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 rejection was based on the Board's interpretation of Allergan USA, Inc. v. MSN Labs. (Fed. Cir. 2024), which held 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.'"
"The purpose of the ODP doctrine is 'to prevent patentees from obtaining a second patent on a patentably indistinct invention to effectively extend the life of a patent.'"
"At least one amicus is urging the Office to affirm the decision's holding and clarify that the focus should be on 'whether there is any unjustified extension of term when determining if an ODP rejection is appropriate'."
Over a dozen judges have addressed non-statutory obviousness-type double patenting (ODP) since the Allergan v. MSN decision, aligning with the Board's conclusions in Ex parte Baurin. The USPTO is reviewing issues from a 2025 PTAB rehearing decision, with amicus briefs advocating for a focus on unjustified term extensions in ODP rejections. The Appeals Review Panel will examine the implications of the Ex Parte Baurin decision, which reversed ODP rejections based on the timing of patent filings and expirations, referencing the Allergan case's interpretation of ODP.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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