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Ex parte Baurin: The Limit on Allergan's Limit

USPTO Appeals Review Panel, decided 6 August 2026, designated precedential. This is an agency decision, not a court decision. It binds Patent Office personnel and binds no court. Read from the decision; quotations verified against its own text.

Read this with In re Cellect and Allergan v. MSN. Cellect creates the exposure, Allergan bounds it, and this decision shows how narrowly the Patent Office reads that bound during examination. Alone, this page overstates the risk. Allergan alone now overstates the relief available in prosecution.
Holding

On August 6, 2026 a precedential USPTO Appeals Review Panel reversed the Board and sustained the examiner's obviousness-type double patenting rejections, holding that the anti-harassment rationale independently supports such a rejection even where no extension of patent term is apparent, and that Allergan's exception does not apply unless the challenged claims are first-filed, first-issued and later-expiring within a family sharing a patent term filing date.

Allergan told patent owners that the first patent in a family cannot be killed by its own later relatives. The Patent Office has now said how narrowly it reads that, and the answer is: very.

The panel treated Allergan as a three-pronged, fact-specific exception and found the application in front of it failed every prong. The "first-filed" prong refers to actual filing dates. The "first-issued" prong failed because the application was still pending. The "common priority date" prong refers to patent term filing dates, which differed. "Thus, Allergan's holding does not apply here."

Then it went further. The other historical reason for double patenting, preventing an owner from splitting ownership and putting a licensee in front of two different owners, is a rationale that stands on its own. A rejection can issue on that basis with no term extension anywhere in the picture.

The harm the panel described is a transaction problem, not a term problem. A licensee of the first patent "might legitimately believe that it has the full permission of the patent owner," and then needs a second license if the pending application issues. Worse, if the owner sells the pending application, "licensees of the '922 patent would have to negotiate with an entirely different entity." That is what the doctrine is now being used to prevent.

What It Tells Examiners

The decision closes with explicit guidance. Office personnel "should continue to follow existing pre-Allergan OTDP practice discussed in MPEP § 804" unless both conditions hold: the application and the reference are in the same family with the same patent term filing date, and the claims under examination are first-filed, first-issued and later-expiring.

Then the sentence that decides how much Allergan is worth inside the Office: it "will rarely, if ever, arise in original examination because a patent examiner will rarely, if ever, be in a position to determine that the claims under examination will be first-filed, first-issued, and later-expiring claims."

The Panel Says It May Be Wrong

This is unusual enough to report on its own. The panel wrote that if the Federal Circuit's precedents "should not be read as permitting OTDP rejections based on the anti-harassment rationale where no term-extension concern is apparent, the Office would welcome that clarification from the court."

It then named the vehicle: In re: Ablynx N.V., Appeal No. 26-1333, already before the Federal Circuit. So this holding could be corrected, and the body that issued it said as much.

What This Decision Is Not

"Allergan barely applies" is wrong in the forum that matters most. This decision governs examination. It does not govern a district court, and an agency panel does not overrule a Federal Circuit decision. A patent owner in litigation is still in Allergan's world.
  • It does not overrule or narrow Allergan as a matter of law. It states how the Office will apply it.
  • It does not say whether any particular family is exposed to double patenting.
  • The panel also proposes a possible future framework for handling double patenting at the Office. That proposal is expressly contingent on a clarification that has not happened, and is not current practice.
  • It does not say anything about whether to file a terminal disclaimer, which is irreversible after issuance in one direction and unavailable after expiration in the other.

Educational, not legal advice. Agency practice and court doctrine can diverge, and this decision is a live example. Consult a qualified patent attorney with the actual family in front of them.

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