Breaking Down Allergan’s Double-Patenting Case: Insights from Brandon Stephens, George Chen, and Cory Smith in Law360

BCLP Associate Brandon Stephens authored an article for Law360 alongside Partners George Chen and Cory Smith analyzing the implications of the U.S. Court of Appeals for the Federal Circuit’s decision in Allergan USA Inc. v. MSN Laboratories Private Ltd., which addresses issues of obviousness-type double patenting (ODP) in patent prosecution. The authors take a unique approach, not only examining the decision’s immediate impact but also uncovering how the prosecution history of the first-filed parent ‘356 patent reveals strategies to avoid litigation and extend patent lifespans.

Brandon, George, and Cory explore the procedural decisions made while prosecuting Allergan’s patents—such as responding to restriction requirements, electing claims, and seeking rejoinder—and demonstrate how these actions significantly shaped the litigation’s outcome. Drawing on these insights, they offer practical strategies for optimizing patent portfolios, including preserving claims in the original application, leveraging patent term adjustments, and securing safe harbor protections under 35 U.S.C. § 121.