Applicants building patent families through continuation and divisional filings now face a clearer — and broader — path to double patenting rejections after the U.S. Patent and Trademark Office issued a precedential ruling in Ex parte Baurin. On August 6, 2026, 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 agency USPTO designated as precedential the decision the same day, giving it weight in how the Board handles similar appeals going forward.
The significance lies in what the panel rejected. Applicants have commonly argued that a double patenting rejection cannot stand where their patent would expire before the reference patent, because no term extension concern exists. The panel held that the anti-harassment rationale remains applicable under binding precedent and can support a rejection even without any term extension concern. That rationale is rooted in preventing multiple infringement suits by different owners over essentially the same invention if related patents later separate in ownership.
The ruling lands hardest on applicants who hold several applications in the same family, since 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 the question, leaving room for further litigation over the standard.
For practitioners, the practical message is that family-level planning should begin before the first filing rather than after a rejection arrives. J. Baron Lesperance, founder of The Patent Baron, PLLC, an intellectual property firm led by a patent lawyer serving Chicago, IL, said applicants who grow a patent family through continuations should expect double patenting rejections and plan for them early. Reviewing how related applications overlap before the first filing gives applicants more options than responding after a rejection is issued, he said.
Because the decision is precedential, it guides how the Board resolves similar appeals and signals that examiners retain a durable tool for challenging claims across related applications. Applicants weighing continuation strategies, terminal disclaimers, or claim differentiation should factor the ruling into their filing decisions now, since the consequences of overlapping claims may surface long after prosecution begins.
