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

The USPTO announced an Appeals Review Panel to examine obviousness-type double patenting (ODP) issues following a PTAB rehearing decision in Ex Parte Baurin. The PTAB denied an examiner's reconsideration request, maintaining its reversal of ODP rejections for antibody-binding protein claims. The examiner's reference patent, U.S. Patent No. 10,882,922, was deemed improper because it was later-filed and later-expiring than the application under examination. The examiner argued the Board misinterpreted the Allergan v. MSN Labs Federal Circuit decision, which established that first-filed, first-issued, later-expiring claims cannot be invalidated by later-filed, later-issued, earlier-expiring references with common priority dates. The decision clarifies that proper ODP reference requirements supersede common ownership considerations.

"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."

"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."

"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."

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