# Expires first, still rejected. 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. Sources checked October 16, 2026 **5 years** earlier expiration than the reference patent, and the double-patenting rejection was still sustained. ## 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? - No: no term extension, no problem - Yes: separate ownership is an independent concern - Only after the parent expires 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.” ## Expires first 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. Baurin, pp. 2–3 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. Baurin ## The doctrine in brief 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. 37 C.F.R. § 1.321(c)(3) ## Why Allergan didn’t apply 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.” Allergan v. MSN The panel held that “the OTDP exception Allergan establishes does not apply to the facts here.” Baurin, p. 12 ## The rejection stood anyway 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.” Baurin 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.” Baurin ## What examiners do now 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. Baurin, pp. 31–32 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.” Baurin, p. 20 The status of the Ablynx appeal has not been checked since the decision. ## What to do Choose your side. ## Cuts the other way 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.” Baurin, p. 12 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. ## Related stories - [AI claims can recite math and still pass § 101.](https://postgrantproceeding.com/insights/d16-ai-claims-can-recite-math-and-still-pass-101) - [The precedent in your template may have retired.](https://postgrantproceeding.com/insights/d20-the-precedent-in-your-template-may-have-retired) - [Give up the claims, and the review never starts.](https://postgrantproceeding.com/insights/d11-give-up-the-claims) ## Sources - S35. Ex parte Baurin, Appeal No. 2024-002920 (USPTO Appeals Review Panel August 6, 2026) (precedential, designated Aug. 6, 2026). https://www.uspto.gov/sites/default/files/documents/rh2024-002920_ARP_final.pdf - S85. Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024). https://www.cafc.uscourts.gov/home/case-information/opinions-orders/ - S24. Federal patent regulations, 37 C.F.R. §§ 1.321(a), 42.107(e) and 42.121. Reproduced in MPEP Appendix R; consult intervening official rulemaking for later amendments. https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html ## Not yet confirmed - The status of the Ablynx appeal has not been checked since the decision. - Allergan’s own later history has not been checked for this story. 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. General information about published decisions, not legal advice. Reading it does not create an attorney-client relationship.