The USPTO Publishes Proposed Changes to Terminal Disclaimer Practice

  • May 22, 2024

By: Amanda V. Cardona

The USPTO has issued a proposal to add a new requirement for terminal disclaimers (TD) filed to overcome non-statutory double patenting rejections. Under the proposed requirement, a patent subject to a TD would be held unenforceable in its entirety if a prior patent referenced in the TD contains a claim that is subsequently deemed unpatentable or invalid over prior art. The proposed rule is intended to benefit third parties by reducing the cost of separately challenging each patent covered by a TD. However, if enacted, the rule would unfairly compromise the enforceability of any patent subject to a TD through unrelated legal actions.

The doctrine of non-statutory double patenting was created to prevent improper prolongation of patent term beyond the life of a prior patent by prohibiting claims to an obvious variation of an invention already patented by the same entity. To overcome the non-statutory double patenting rejection, the Applicant may execute a TD to disclaim any patent term beyond the life of the prior patent and agree that the newly issued patent will only be enforceable as long as the patents are owned by the same party.

Under the proposed rule, TDs would also require the Applicant to agree that any patent issuing from the application will become automatically unenforceable in its entirety if any claim in the prior patent is finally deemed to be invalid for lack of novelty or obviousness in federal court or at the USPTO. The rule would be a major departure from current patent litigation procedures which typically require claim construction and careful consideration of prosecution history before invalidating any issued claims. If enacted, a patentee could lose property rights without ever having the chance to defend the validity of the affected patent in court.

The proposed requirement would only apply to TDs filed on or after the effective date of the final rule. Nonetheless, practitioners and patent owners should implement patent portfolio strategies that limit exposure to non-statutory double patenting rejections and consider alternative options for response to these rejections that avoid submission of a TD.

The USPTO is accepting comments on the proposed rule until July 9, 2024. Stakeholders are encouraged to submit comments for consideration before the deadline.

This IP Advisory was prepared by Lando & Anastasi, LLP. The information provided in this Advisory does not, and is not intended to, constitute legal advice; instead, all information, content, and materials are for general informational purposes only. Readers should contact an attorney to obtain legal advice with respect to any particular legal matter.

© 2024 Lando & Anastasi, LLP


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