The U.S. Patent and Trademark Office's August 6, 2026, decision in Ex parte Baurin, designated precedential the same day, has significant implications for patent applicants, particularly those who build patent families through continuation and divisional applications. The Appeals Review 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—even when no patent term extension concern exists.
The anti-harassment rationale aims to prevent multiple infringement suits by different owners over essentially the same invention if related patents later separate in ownership. The panel held that this rationale remains applicable under binding precedent and can justify a double patenting rejection independently. According to The Patent Baron, PLLC, an intellectual property firm led by a patent lawyer serving Chicago, IL, this development means applicants can no longer rely solely on the argument that their patent would expire before the reference patent to avoid a rejection.
The decision matters most to applicants who hold several applications in the same family, because 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. The panel also questioned how much weight the anti-harassment rationale should carry and invited the Federal Circuit to clarify it. Because the decision is precedential, it guides how the Board handles similar appeals and signals a more robust application of double patenting doctrine.
"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." This advice underscores the importance of strategic patent portfolio management, as the decision may lead to more rejections and require applicants to carefully draft claims to avoid overlap or to file terminal disclaimers proactively.
The USPTO's designation of Ex parte Baurin as precedential is a clear signal that the anti-harassment rationale is here to stay, at least until the Federal Circuit weighs in. Applicants with pending or related applications should review their strategies to mitigate the risk of double patenting rejections, as the decision reinforces the need for early and careful planning in patent family development.
