A pending continuation would expire five years before its reference patent, so there was no term to extend. In August 2026 the Office’s Appeals Review Panel sustained the double-patenting rejection anyway, because the two patents could end up with different owners. Allergan’s exception, it held, didn’t apply.
Before you read
A continuation will expire before the patent it is rejected over, so it can’t extend that patent’s term. Can the Office still sustain an obviousness-type double-patenting rejection?
Yes. In Baurin (precedential), the Appeals Review Panel relied on the risk of harassment by separate owners, “even where there was no evident term extension concern.”
Part 1 of 7
A pending continuation claiming a binding protein would expire on March 28, 2032. The reference patent it was rejected over runs to April 13, 2037, plus 70 days of patent term adjustment. Double patenting is usually about stopping a later patent from extending an earlier one’s term, and that couldn’t happen here. The Board reversed the rejection.
The application is still pending. Not first actually filed, not first issued, and it would expire first.
Source
On August 6, 2026, the Appeals Review Panel reversed the Board: “On review, we REVERSE.” The examiner’s double-patenting rejections were sustained, and the decision was designated precedential the same day.
Part 2 of 7
Obviousness-type double patenting is a court-made rule that bars a second patent on an obvious variant of claims an applicant already has. The usual fix is a terminal disclaimer, in which the owner gives up any term beyond the reference patent and agrees that the patent is enforceable only while it is commonly owned with the reference.
Preventing an unjustified extension of exclusivity. Not at issue here: the application would expire first.
Preventing “harassment by multiple assignees”: separate owners suing on patents that cover the same invention. This one decided Baurin.
Part 3 of 7
In Allergan v. MSN (2024), the Federal Circuit 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 panel held that “the OTDP exception Allergan establishes does not apply to the facts here.”
Part 4 of 7
The Board had dismissed the anti-harassment rationale as inadequate. The panel disagreed. The Federal Circuit “has repeatedly recognized the anti-harassment rationale,” including in In re Fallaux, “even where there was no evident term extension concern.”
“[W]e are compelled to reverse the Board and sustain the rejections for OTDP on appeal.”
The practical concern: if the continuation issued and was later sold, licensees of the reference patent “would have to negotiate with an entirely different entity.”
Part 5 of 7
Section V of the decision instructs examiners to keep following pre-Allergan practice unless the application and reference are in the same family with the same term-setting filing date, and the claims are first-filed, first-issued and later-expiring. In original examination, that “will rarely, if ever, arise.” It can arise in reexamination or reissue.
The tempting reading
After Allergan, a continuation that expires before its parent is safe from double patenting.
What Baurin says
Not at the Office. Allergan’s exception needs first-filed, first-issued, later-expiring claims, and the anti-harassment rationale can sustain a rejection without any term extension. In original examination, the exception will rarely, if ever, apply.
Source
The panel also signaled where the law may go. If the Federal Circuit’s precedent shouldn’t be read this way, “the Office would welcome that clarification from the court.” It noted that “the issue is now before the court in In re: Ablynx N.V., Appeal No. 26–1333.” The status of the Ablynx appeal has not been checked since the decision.
Part 6 of 7
Choose your side.
Part 7 of 7
Baurin binds the Office, not the courts, and the Federal Circuit may take a different view in Ablynx. The panel itself called the anti-harassment question part of “a broader (and arguably unsettled) doctrinal question.”
Source
Eleven amicus briefs show how contested the question is. Allergan’s own later history has not been checked for this story.
The takeaway
Add ownership and filing chronology to the expiration chart before treating an earlier expiration as the answer.
Each item is marked in the story with a dashed outline. We update the story when the official record confirms or corrects it.
Precedential decisions bind the Board within their designated scope. Informative decisions show the Office’s reasoning but do not bind the Board. Court opinions are cited for what they decided; later history was checked on the date shown above.