USPTO Precedential Decision Keeps Double Patenting Rejections Available Even Without a Term Extension Concern

Patent Law Firm Explains What the Ex parte Baurin Decision Means for Applicants With Related Applications

CHICAGO, IL, November 01, 2026 /24-7PressRelease/ -- A precedential decision issued by the U.S. Patent and Trademark Office this August is changing 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 decision 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. This 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.

Key Points From the Decision That Applicants Should Know

• 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 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.

"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."

About the Firm

The Patent Baron, PLLC is a Michigan intellectual property firm with its main office in Howell. Founder J. Baron Lesperance is registered to practice before the USPTO and represents inventors and businesses nationwide in patent matters before the agency. He is admitted in Michigan, the District of Columbia, and Ontario, Canada. His engineering experience includes work for Lear, Robert Bosch, Hella, and Ford, and he managed a global wireless charging patent portfolio at Alticor before entering private practice. The firm handles patent filings, portfolio management, trademarks, and copyrights. Applicants with pending or related applications can schedule a consultation to review their strategy.

Read the full story here: https://www.24-7pressrelease.com/press-release/539345/uspto-precedential-decision-keeps-double-patenting-rejections-available-even-without-a-term-extension-concern

Press Release Service and Press Release Distribution by 24-7 Press Release Newswire