BOSTON, MA, UNITED STATES, March 30, 2026 /EINPresswire.com/ — Choate, Hall & Stewart LLP has submitted an amicus curiae brief on behalf of the Biotechnology Innovation Organization (BIO) to the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) Appeals Review Panel (ARP) concerning Ex parte Baurin (Appeal No. 2024 002920). This brief addresses critical questions posed by the USPTO Director about the application of the doctrine of obviousness-type double patenting (OTDP) during patent prosecution, with the aim of protecting foundational biotechnology inventions and enhancing predictability in patent rights.
In light of a recent order issued on March 5, 2026, the ARP is re-evaluating the use of OTDP by examiners, especially in the context of recent Federal Circuit rulings, including the case of Allergan USA, Inc. v. MSN Laboratories Private Ltd. (Fed. Cir. 2024). The outcome of this reconsideration is anticipated to have significant implications for biotechnology companies, particularly those that depend on early filed patents which may undergo protracted prosecution and subsequently receive patent term adjustments (PTA).
BIO, the world’s largest biotechnology advocacy organization, represents a diverse array of biotech companies and institutions—from emerging startups to established global biopharmaceutical firms—all of which rely on robust and predictable patent protection. In its amicus brief, BIO asserts that the ARP should reaffirm the following principles:
- Later filed patents should not be used to abbreviate the term of first filed applications under OTDP, in accordance with the precedents established in Allergan and the fundamental objective of the doctrine.
- Examiners should refrain from relying on speculative or ‘projected’ patent term adjustments when assessing OTDP rejections during prosecution.
- Separate ownership should not alone warrant OTDP rejections, as this could undermine collaboration, licensing, and innovation, particularly within the biotechnology sector.
BIO further highlights that the improper application of OTDP could jeopardise the patent term for foundational inventions, thereby dissuading investment and subsequent innovation. By ensuring the consistent application of OTDP in alignment with Supreme Court and Federal Circuit precedents, the ARP can maintain established expectations and safeguard incentives for transformative biotechnology research.
Sophie F. Wang and Natalie A. Phillips represented BIO in the amicus filing.
About Choate
Choate Hall & Stewart LLP is recognised as one of the leading law firms in the nation, providing representation for national and international clients across a core range of legal practices, including finance and restructuring, investigations and litigation, intellectual property, private equity, and middle market M&A, as well as wealth management. The firm’s partners and practice areas receive consistent accolades from Chambers USA, The Legal 500, Best Lawyers, and Benchmark Litigation. For further details, please visit choate.com.
Legal Disclaimer:
EIN Presswire offers this news content ‘as is’ without any warranty of any kind. We do not accept any responsibility or liability for the accuracy, content, images, videos, licenses, completeness, legality, or reliability of the information contained in this article. Any complaints or copyright issues related to this article should be directed to the author above.