“[The CAFC has] repeatedly sustained ODP rejections where the reference patent has a later priority and patent-term filing date than the application under examination.” – Professors Mark Lemley and Lisa Ouellette
That’s the mic-drop line from two heavyweight academics, staring down the Patent Trial and Appeal Board’s latest twist on obviousness-type double patenting. And it’s got the USPTO’s Appeals Review Panel listening.
Ex Parte Baurin isn’t just another patent squabble. It’s a flashpoint. Last December, the PTAB doubled down on a reversal, greenlighting claims in a 2012-filed application over a 2017 patent — because that later patent expires even later, in 2037. Wild, right? The examiner cried foul, citing Allergan v. MSN Labs from the Federal Circuit. But the Board shrugged it off.
What Triggered the USPTO’s Rare ARP Dive?
Flash back to November 2024. Examiner slaps ODP rejections on U.S. App. 17/135,529 — think antibody-like binding proteins, the kind fueling tomorrow’s AI-designed therapies. Reference: U.S. Patent 10,882,922, filed years later.
Board says no dice. Allergan rules the day: you can’t use a later-filed, later-issued, earlier-expiring claim to nix a first-filed, later-expiring one with shared priority. Purpose? Block patent term extensions on indistinct inventions, not kneecap the first patent’s natural life.
Examiner begs for rehearing — Board misread Allergan, claims aren’t patentably distinct, obvious variants. Applicant fires back: our app traces to 2012, theirs to 2017; ours disclaims past 2032 anyway.
PTAB sticks to its guns. “Allergan’s reasoning compels us,” even sans shared priority. Enter Acting Commissioner Squires, convening the ARP sua sponte. Three big questions for amici:
- Allergan’s reach beyond its facts?
- Examiners projecting expiration dates?
- Ownership harassment as standalone ODP basis?
Boom. Amici flood in. Most back the Board. But Lemley and Ouellette? They’re swinging hard.
Professors’ Firebomb Brief: CAFC Precedent Ignored?
Lemley — Stanford’s IP rockstar — and Ouellette don’t mince words. CAFC cases like In re Fallaux, In re Hubbell? They’ve upheld ODP rejections with later-filed references. Repeatedly.
“the CAFC has repeatedly sustained ODP rejections where the reference patent has a later priority and patent-term filing date than the application under examination.”
Allergan? Inapplicable. That case hit same-family patents with shared priority. Here? Different families, no overlap. And another PTAB panel in In re Baumeister followed Fallaux, rejecting the Board’s logic.
Anthony Prosser, pro-Board amicus, waves it off — Fallaux is ancient (2009), two-way vs. one-way test focus. But professors smell blood. They’re urging ARP to affirm the examiner, restore sanity.
Here’s my take, as a futurist hooked on AI’s patent gold rush: this echoes the 1990s internet patent mess. Remember Amazon’s one-click? Chaos reigned until courts clarified obviousness. Today, AI-biotech hybrids — like these binding proteins optimized by neural nets — demand clear ODP rules. Screw this up, and we’re patenting obvious tweaks forever, choking the innovation pipeline just as AI drugs hit warp speed.
Does Allergan Stretch Too Far?
Allergan was narrow: first-filed/issued/later-expiring safe from later-filed/issued/earlier-expiring with common roots. Baurin stretches it — no common priority, yet same logic.
Examiners argue projected expirations matter now, pre-issue. With PTAs, terminal disclaimers, it’s a crystal ball game. Board says nah, stick to statutory terms.
But wait. Ownership risk? Separate owners harassing with obvious variants — classic ODP rationale. Yet Board’s ruling invites it.
Analogy time: imagine traffic lights. First light (your app) stays green longer. Later light (reference) blinks out early. Should the later one block the first? Allergan said no — for family ties. Untie that, and gridlock everywhere.
Why Does This Matter for AI Patent Rush?
AI’s exploding patent filings — 50,000+ in 2024 alone, per WIPO. Many biotech crossovers: AlphaFold-inspired proteins, generative models spitting drug candidates.
Muddy ODP? Later filers with tweaks game the system, extending effective monopoly past pioneers. It’s not hype; it’s a blockade on the AI-biotech singularity.
Prediction — my unique spin: ARP sides with professors, sparking a CAFC clash by 2026. Like GPL vs. proprietary in software ’90s, this forces USPTO to codify ODP for post-Allergan world. Winners? Innovators chaining ideas without term-patent Tetris.
Board’s PR spin? “Compelling reasoning.” Please. It’s a leap, ignoring Fallaux lineage. Corporate applicants cheer; examiners groan.
And the ARP panel? Squires plus top dogs. Decision drops soon — stakes sky-high.
The Bigger Picture: Patent Wars Fueling AI Tomorrow
Double patenting started simple: no unjust extensions. Now? Post-URAA terms, PTAs, it’s fractal.
Examiners need tools — projected dates, yes. But policy must evolve. Imagine AI auto-filing variants; ODP becomes firewall.
Baumeister split proves it: panels warring. ARP unifies — or escalates.
Energy here? Electric. This isn’t dusty law; it’s the scaffold for AI curing cancer.
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Frequently Asked Questions
What is Ex Parte Baurin about? PTAB rehearing on ODP rejection for antibody proteins; Board reversed examiner using Allergan precedent.
Does Allergan apply to non-family patents? Professors say no — CAFC precedent like Fallaux allows later-filed references for ODP.
Will ARP change ODP rules for biotech? Likely clarifies Allergan’s limits, potentially backing examiners on expirations and ownership risks.
