USPTO Precedential Ruling Reshapes Double Patenting Strategy

A precedential decision issued by the U.S. Patent and Trademark Office this August is reshaping how applicants with related patent applications should plan their filings. The Patent Baron, PLLC, an intellectual property firm led by a patent lawyer serving Chicago, IL, is explaining the ruling to inventors and businesses that build patent families through continuation 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. That rationale aims to prevent multiple infringement suits by different owners over essentially the same invention if related patents later separate in ownership.

The decision matters most to applicants holding 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. Among the key points: the panel held the anti-harassment rationale remains applicable under binding precedent and can support a 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; and the panel questioned how much weight the rationale should carry, inviting the Federal Circuit to clarify it. Because the decision is precedential, it guides how the Board handles similar appeals.

J. Baron Lesperance, founder of The Patent Baron, PLLC, 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, he noted, gives applicants more options than responding after a rejection arrives. The firm is a Michigan intellectual property practice with its main office in Howell. Lesperance is registered to practice before the USPTO and represents inventors and businesses nationwide, handling patent filings, portfolio management, trademarks, and copyrights. Applicants with pending or related applications can schedule a consultation to review their strategy.