The U.S. Patent and Trademark Office has issued a precedential decision that broadens the grounds for obviousness-type double patenting rejections, potentially affecting how applicants manage related patent applications. On August 6, 2026, the USPTO Appeals Review Panel decided Ex parte Baurin, which the USPTO designated as precedential the same day. The panel reversed a Patent Trial and Appeal Board decision and reinstated an examiner's obviousness-type double patenting rejection, ruling that the "anti-harassment" rationale can support such a rejection on its own. This rationale aims to prevent multiple infringement suits by different owners over essentially the same invention if related patents later separate in ownership.
The decision carries significant implications for applicants who hold several applications in the same family, as related claims are the usual target of double patenting rejections. Continuation and divisional applications, which share a specification with an earlier filing, commonly raise the issue. According to The Patent Baron, PLLC, an intellectual property firm led by a patent lawyer serving Chicago, IL, this ruling means applicants can no longer rely solely on the argument that their patent would expire before the reference patent to avoid a rejection.
Key points from the decision that applicants should know include: the Appeals Review Panel held that the anti-harassment rationale remains applicable under binding precedent; the rationale can support a double patenting rejection even where no patent term extension concern exists; applicants cannot rely only on the argument that their patent would expire before the reference patent; the panel questioned how much weight the rationale should carry and invited the Federal Circuit to clarify it; and because the decision is precedential, it guides how the Board handles similar appeals.
"Applicants who grow a patent family through continuations should expect double patenting rejections and plan for them early," said J. Baron Lesperance, founder of The Patent Baron, PLLC. "Reviewing how related applications overlap before the first filing gives applicants more options than responding after a rejection arrives, so that planning is worth doing now."
The decision underscores the importance of strategic patent portfolio management. By planning for potential double patenting rejections early, applicants can avoid costly and time-consuming appeals. The ruling also invites further clarification from the Federal Circuit, which could shape future USPTO practices. For businesses and inventors building patent families, this development highlights the need to carefully assess overlap between related applications before filing, as the consequences of a rejection can delay patent issuance and increase costs.
