A precedential decision issued by the U.S. Patent and Trademark Office on August 6, 2026, is reshaping how applicants with related patent applications should approach their filings. In Ex parte Baurin, the USPTO Appeals Review Panel reversed a Patent Trial and Appeal Board decision and reinstated an examiner’s obviousness-type double patenting rejection, holding that the “anti-harassment” rationale can support such a rejection on its own. The USPTO designated as precedential the same day, giving the ruling binding effect on how the Board handles similar appeals.
The anti-harassment rationale is aimed at preventing multiple infringement suits by different owners over essentially the same invention if related patents later separate in ownership. Until now, applicants could often defeat a double patenting rejection by arguing that their patent would expire before the reference patent, addressing a term extension concern. The panel ruled that applicants cannot rely only on that argument, because the anti-harassment rationale remains applicable under binding precedent even where no patent term extension concern exists. The decision thus broadens the grounds on which examiners can maintain double patenting rejections.
The ruling 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. Applicants who build patent families through continuations should expect double patenting rejections and plan for them early, according to The Patent Baron, PLLC, an intellectual property firm that works with inventors and businesses on patent strategy. “Reviewing how related applications overlap before the first filing gives applicants more options than responding after a rejection arrives,” said J. Baron Lesperance, founder of the firm. He added that such planning is worth doing now, given the precedential weight of the decision.
The panel also questioned how much weight the anti-harassment rationale should carry and invited the Federal Circuit to clarify the issue. That invitation signals that further litigation may refine the standard, but until then, the decision guides examiners and the Board. For applicants, the practical effect is that double patenting rejections may be harder to overcome, especially in large families with overlapping claims. Early review of claim scope across related applications can help applicants avoid costly rejections and preserve flexibility. The firm notes that applicants with pending or related applications should review their strategy in light of the ruling.
