Obviousness-Type Double Patenting: Navigating the Evolving Doctrine at the USPTO and Federal Circuit

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.

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.