About the Course
Introduction
This CLE webinar will guide patent counsel on the evolving landscape of obviousness-type double patenting (ODP) following the recent decisions in Baurin, Baumeister, and the proposed changes at the USPTO. The panel will offer prosecution strategies after Baurin and Baumeister.
Description
The law of ODP is in a state of chaos, challenging applicants, patentees, and practitioners across drafting and prosecution, licensing, M&A, and litigation in all technologies. After the Federal Circuit's Allergan v. MSN Laboratories decision, some mistakenly thought ODP would become more closely tied to preventing unjustified patent-term extension. Instead, the USPTO has in some instances exalted "possible harassment," sometimes making it the sole basis for an ODP conclusion even where there is no factual basis for unjustified patent-term extension.
Two recent examples of exaltation of possible harassment, even if there is no unjustified patent term extension, are Ex parte Baurin and Ex parte Baumeister, both now on appeal at the Federal Circuit. The PTAB's original decision in Baurin relied on the reasoning of Allergan and appeared to limit ODP to instances of unjustified patent-term extension. But, the USPTO Director vacated that PTAB decision and convened an Appeals Review Panel (ARP). In August 2026, the ARP issued a precedential decision reversing the PTAB and reinstating ODP rejections based solely on the anti-harassment rationale.
The Baurin timeline shows no possibility of unjustified patent-term extension, given the terminal disclaimer (TD) filed in the commonly owned '529 application rejected over the '922 patent. The PTAB in Baumeister also relied solely on the "possible harassment" theory. As in Baurin, the Baumeister timeline likewise shows no such possibility of unjustified patent-term extension, given the TD filed in the '019 application rejected over the '364 patent — although the USPTO appears confused about whether the '019 application and the '364 patent are commonly owned (clearly they are not), having taken contradictory positions within its own August 2026 Federal Circuit responsive brief in Baumeister, litigated sub nom In re Ablynx, Sanofi.
The panelists will explain how, in Baurin, the USPTO failed to apply controlling en banc Federal Circuit precedent In re Jentoft (CCPA 1968), where there was, as in Baurin, common ownership and no possibility of unjustified term extension and in Jentoft, a finding of no ODP. At least one commentator appears to suggest en banc Van Ornum (CCPA 1982) overrules Jentoft or renders it non-controlling. At least one panelist disagrees. Van Ornum applied a two-part analysis: the court first found improper term extension, and only then discussed possible harassment. Because a TD prevented improper term extension in Jentoft and Baurin, Van Ornum is factually distinguishable — and Jentoft controls. In Baumeister, there was lack of common ownership, but Van Ornum does not control Baumeister, where there was no possibility of unjust patent term extension. We think that the rationale of Jentoft is more apt and should control in Baumeister to result in a finding of no ODP. And of course, en banc precedent like Jentoft controls over panel decisions, such as Cellect, Fallaux, and Hubbell.
If Baurin and Baumeister are reversed, the "apologist" portion of the Baurin ARP decision — where the panel suggested it would have affirmed the PTAB rejection but for Federal Circuit constraint — could be implemented to clarify much of the confusion. According to the PTO, once liberated from decisions such as Fallaux, Hubbell, and Cellect, it could usher in an ODP framework increasing certainty around patent strategy, terminal disclaimers, continuation practice, and later-issued patents.
Listen as our authoritative panel examines the current state of ODP after the precedential Baurin ARP decision and the Baumeister rejection now on appeal sub nom In re Ablynx, Sanofi, including the interplay among Allergan, Cellect, Fallaux, Hubbell, and the pending Baurin and Baumeister appeals, all viewed in light of the en banc CCPA decisions in Jentoft and Van Ornum.
Presented By
Ms. Hasan is dedicated to providing legal counsel that transforms scientific innovation into protected assets. By leveraging her background as a researcher to safeguard clients' breakthroughs in immunology, molecular biology, and pharmaceuticals, Ms. Hasan navigates the intricate landscape of global patent law. She believes in legal solutions that ensure groundbreaking ideas are not just conceived but also fortified as they enter markets worldwide. Ms. Hasan translates complex scientific concepts into robust legal protections, bridging the gap between laboratory discoveries and market-ready products. This unique skill set often proves invaluable in preparing and prosecuting U.S. and foreign patent applications, as well as in conducting thorough freedom-to-operate and due diligence reviews. Ms. Hasan serves as a Barnes & Thornburg AI Practice Champion, one of nearly 40 attorneys across the firm designated to advance the practical use of AI within their practice group and help translate the firm's AI strategy into day-to-day client work.
Mr. Irving has more than 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. Mr. Irving has served as lead counsel in many patent interferences.
Ms. O’Brien has more than 25 years of experience representing both domestic and foreign clients of all sizes in the areas of patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of Ms. O’Brien’s technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products including new chemical entities and formulations, as well as novel solid forms including polymorphs, cocrystals, and amorphous forms of compounds. Ms. O’Brien’s expertise includes all aspects of preparing and prosecuting U.S. and foreign patent applications, such as patent drafting and prosecution, as well as more complex matters such as reissue and reexamination proceedings, appeals hearings, Post-Grant Reviews (PGR), and Inter Partes Reviews (IPR) before the Patent Trial and Appeal Board (PTAB). Her litigation expertise focuses on patent infringement cases including, for example, Hatch-Waxman litigation involving Abbreviated New Drug Applications, and includes all stages from pre-discovery through trial.
Ms. Wang is a first-chair trial lawyer who represents biotech, pharmaceutical, and technology companies in complex and high stakes intellectual property and commercial disputes across the country. She is a go-to resource for clients in the life sciences industry, including for “bet-the-company” patent litigation (including Hatch-Waxman and biosimilar litigation), post-grant review (PGR) and inter partes review (IPR) proceedings before the United States Patent Trial and Appeal Board (PTAB), trade secrets litigation, and contract, licensing, and other commercial disputes. She also routinely advises clients on the management of their US and global patent and litigation strategies, including regularly consulting with counsel before the EPO and in the UK, Germany, and other foreign jurisdictions. Ms. Wang's practice also includes regular representation of leading industry organizations in submitting amicus curiae briefs to the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit on a variety of key IP issues. She is also a frequent speaker and writer on IP-related topics and policies and has served in leadership roles in numerous organizations including the American Intellectual Property Law Association (AIPLA), the Alan D. Lourie Boston Intellectual Property American Inn of Court, and the Asian American Lawyers Association of Massachusetts (AALAM).
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Date + Time
- event
Thursday, October 1, 2026
- schedule
1:00 PM ET/10:00 AM PT
I. Evolving ODP caselaw at the Federal Circuit considered in light of binding en banc Federal Circuit authority from the CCPA, i.e., Jentoft and Van Ornum; possible effects of Corteva, Mates, Blanchard, and district court Arkose
II. Ex Parte Baurin
A. PTAB decision
B. Director review and ARP proceedings
C. ARP precedential decision
D. Director Squire’s proposed future framework if Baurin wins
E. Baurin has appealed to the Federal Circuit; no Sanofi brief filed as of today.
III. Ex Parte Baumeister
A. PTAB decision
B. Federal Circuit pending appeal sub nom Alblynx/ Sanofi); Sanofi’s response brief in Ablynx/Baumeister is due Sept. 17, 2026
V. Prosecution strategies and takeaways after Baurin and Baumeister, no matter how those two decisions come out
The panel will review these and other key issues in this "you can't miss it" webinar:
- How recent Federal Circuit and USPTO decisions are reshaping ODP doctrine
- Can possible harassment be the sole basis for an ODP rejection?
- The potential impact of the USPTO Director's proposed future framework for handling ODP on patent practice in the event victory is achieved in Baurin and Baumeister
- What to do if the ODP rejections are sustained in Baurin and Baumeister
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