Orrick, Herrington & Sutcliffe LLP

03/27/2026 | Press release | Distributed by Public on 03/27/2026 13:07

Amicus Brief on Behalf of Cross-Sector Innovators Urges USPTO Appeals Review Panel to Reject Reverse Application of Double Patenting Doctrine

  • Canon, Inc., H. Lundbeck A/S, Nagra Kudelski Group, Nokia Corporation, RingCentral, Inc., Sonos, Inc., and Sutro Biopharma Inc. have filed a cross-sector innovators' amicus brief supporting patent applicants in In re Baurin, a case proceeding under the U.S. Patent and Trademark Office's rarely-used Appeals Review Panel (ARP), arguing in support of directional implementation of the obviousness-type double patenting (OTDP) doctrine and that later-filed, later-expiring patents therefore cannot invalidate earlier-filed, earlier-expiring patents for OTDP.
  • The amicus effort, led by an Orrick team, argues that the judicially created OTDP doctrine should be guided by its fundamental principles, which preclude rejecting earlier expiring patents in view of later expiring ones and the illogical use of OTDP in reverse. The ARP stems from a patent examiner's use of a patent with a later patent term filing date and a later expiration date as an OTDP reference to reject an application with an earlier patent term filing date and an earlier expiration date. The examiner's position is contrary to the fundamental purpose of the OTDP doctrine, which is intended to prevent unfair timewise extension of patent terms through the filing of later-filed, later-expiring applications.
  • The brief focused on the destabilizing effects that the examiner's approach could have on the innovation economy, including uncertainty in patent valuation, reduced willingness to engage in collaborative research, and an overall reduction in research and development investment. Instead, the brief urges the ARP to uphold the PTAB's earlier ruling in In re Baurin rejecting the examiner's harmful position, an outcome that comports with the fundamental purposes of OTDP.
  • The Orrick team on the amicus effort is led by partners Irena Royzman and Clem Roberts, with support from Dana Sublett.
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