A precedential decision issued by the U.S. Patent and Trademark Office in August 2026 is reshaping how patent applicants with related applications should approach their filings. 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.
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. 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.
According to The Patent Baron, PLLC, an intellectual property firm led by a patent lawyer serving Chicago, IL, the ruling carries several key implications. 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 also questioned how much weight the rationale should carry and invited the Federal Circuit to clarify it. Because the decision is precedential, it guides how the Board handles similar appeals.
For inventors and businesses that build patent families through continuation filings, the practical effect is that double patenting rejections may now arise more frequently and in situations where applicants previously might have assumed they were safe. The removal of the term-extension requirement as a necessary condition means that examiners have broader latitude to reject claims in related applications, and applicants must be prepared to respond with arguments or terminal disclaimers.
“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. Applicants filing continuations or divisionals should assess overlap among claims before filing, consider the potential for double patenting challenges, and evaluate whether terminal disclaimers or claim amendments are appropriate. The panel’s invitation to the Federal Circuit suggests the issue may continue to evolve, but for now, the precedential status means applicants should treat the anti-harassment rationale as a live risk in any related application strategy.
