PTAB Extends Allergan: More Continuations Keep Their PTA Without Terminal Disclaimer
In Ex parte Corteva Agriscience LLC (Reexam Control 90/019,130), the Patent Trial and Appeal Board (PTAB) extended the Allergan framework in a decision that directly affects how practitioners manage patent-term adjustment (PTA) awards across continuation families.
Background
In re Cellect established that expiration dates, including PTA due to patent office delay, control whether obviousness-type double patenting (ODP) applies to bar patents of duplicative scope. Allergan v. MSN carved out one limit: a later-filed continuation cannot be used to challenge the first-filed patent under ODP, even if PTA causes that patent to expire later than the continuation. The original patent sets the family's maximum period of exclusivity.
Corteva Extends the Allergan Rule
The PTAB held that a continuation is not unpatentable for ODP where it does not expire later than the original patent in the family, including the original's PTA, and that no terminal disclaimer is required. The analysis turns on actual expiration dates, not filing or issue dates.
What This Means for Practitioners
After Corteva and Allergan:
- A continuation expiring on or before the original patent's expiration (PTA included) should not be subject to ODP. The Board's reasoning suggests this holds even for later-filed continuations, though Corteva itself involved the first.
- Practitioners not tracking PTA awards across every family member are exposed to unassessed ODP risk.
- The decision leaves unresolved the boundary case where a later continuation receives more PTA and expires after the original.
- The Board held terminal disclaimers in the later-filed patents were sufficient, rejecting the examiner's demand for disclaimers in every family member. That directly contradicts MPEP §804.I.B.1, which says filing in only one application is not sufficient. Watch whether examiners continue to apply the MPEP until it is revised.
Unresolved Issues
Some issues remain to be resolved. Ex parte Baurin, where the Board extended Allergan's logic to bar an ODP rejection over a later-filed, later-expiring unrelated patent, is now before the USPTO's Appeals Review Panel. And In re Ablynx (Fed. Cir. No. 26-1333) puts the question to the Federal Circuit, with the Director's brief due August 7 and amici including Canon, Nokia, and Sonos already weighing in. The doctrinal center of gravity is shifting from which patent expires first to whether a family extends exclusivity beyond the original patent's term. Corteva is one more data point confirming that trajectory.
Read more from Kevin Greenleaf and Aditya M. in IPWatchdog, Inc here: