Applicants pursuing related patent applications should plan for obviousness-type double patenting rejections even when no patent term extension concern exists, according to a precedential decision issued by the U.S. Patent and Trademark Office this August. The ruling is significant for inventors and businesses that build patent families through continuation filings, because it removes a defense many applicants have relied on when responding to examiners.
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. It held that the "anti-harassment" rationale can support such a rejection on its own. That 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. The Appeals Review Panel held that the anti-harassment rationale remains applicable under binding precedent, and that the rationale can support a rejection even where no patent term extension concern exists. As a result, 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, giving examiners and applicants a firmer baseline for disputes over related claims.
The implications extend to portfolio strategy. Applicants who file continuations to broaden or adjust protection should expect double patenting rejections and evaluate overlap among related applications before the first filing, when more options remain available. "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, an intellectual property firm that advises inventors and businesses on patent matters before the agency. He added that reviewing how related applications overlap before the first filing gives applicants more options than responding after a rejection arrives.
The firm, which describes itself as a Michigan intellectual property practice with its main office in Howell, noted that Lesperance is registered to practice before the USPTO and represents clients nationwide. The decision's practical effect is that patent family planning now carries greater weight from the outset, particularly for applicants who use continuation and divisional filings to manage claim scope across multiple patents.
