The U.S. Patent and Trademark Office has issued a precedential decision that reaffirms the availability of obviousness-type double patenting rejections even when no patent term extension issue is present. The ruling, Ex parte Baurin, was decided on August 6, 2026, by the Appeals Review Panel, which reversed a Patent Trial and Appeal Board decision and reinstated an examiner’s rejection. The same day, the USPTO designated as precedential the panel’s ruling, giving it binding guidance for future cases.
At the center of the decision is the “anti-harassment” rationale for double patenting, which aims to prevent multiple infringement lawsuits by different owners over essentially the same invention if related patents later become separately owned. The Appeals Review Panel held that this rationale remains applicable under binding precedent and can support a double patenting rejection on its own, even where there is no concern about extending the life of a patent.
The decision carries immediate implications for applicants who build patent families through continuation and divisional applications. These applications share a specification with an earlier filing and often contain claims that overlap with the parent patent, making them a common target for double patenting rejections. According to The Patent Baron, PLLC, an intellectual property firm that works with inventors and businesses on patent strategy, applicants can no longer rely solely on the argument that their patent would expire before the reference patent. The panel’s ruling explicitly forecloses that defense when the anti-harassment rationale applies.
“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.” Lesperance is a patent lawyer serving Chicago, IL, and leads a firm that handles patent filings, portfolio management, trademarks, and copyrights.
The panel also questioned how much weight the anti-harassment rationale should carry and invited the Federal Circuit to clarify the issue, signaling that further judicial review may shape the doctrine. For now, because the decision is precedential, it guides how the Patent Trial and Appeal Board handles similar appeals. That means applicants with pending or related applications should evaluate their portfolios for overlapping claims and consider whether terminal disclaimers or claim amendments are needed to avoid rejection. The ruling raises the stakes for businesses that rely on continuation filings to protect incremental innovations, as failing to plan for double patenting could delay or block issuance of related patents. The Patent Baron recommends that applicants review related applications for overlap before filing, rather than waiting to respond after a rejection.
