BIPLA Patent Office Practice Committee: Hybrid Brown Bag Lunch on USPTO Notice of Proposed Rulemaking on changes to Terminal Disclaimer Practice

  • May 24, 2024

EVENT DATE: Thursday, May 30, 2024
Time: 12:00 pm
Location: Hybrid – via Zoom or in-person


The Patent Office Practice Committee invites you to a hybrid Brown Bag Lunch to discuss the USPTO’s Notice of Proposed Rulemaking regarding the use of Terminal Disclaimers (“TDs”) to obviate rejections made based on obviousness-type double patenting (“OTDP”). The request proposes to add an additional requirement in order for the USPTO to accept TDs made in response to OTDP rejections, specifically that the patent or application in which the TD is filed (the “subject patent”) will only be enforceable if it is not linked via one or more TDs to another patent (a “reference patent”) that has (1) had any claim finally held unpatentable or invalid as anticipated or obvious in Federal Court or at the USPTO (with all appeal rights exhausted); or (2) been the subject of a statutory disclaimer of a claim filed after a challenge based on anticipation or obviousness.

This proposed rule would apply to patents that have a common owner, assignee, or inventor, as well as those not commonly owned but for which the reference patent was disqualified as prior art as the result of activities undertaken within the scope of a joint research agreement (“JRA”). The proposed rule would also retain the current requirements for TDs, including that a TD must include a provision agreeing that the subject patent will be enforceable only during the period (1) of common ownership of the subject and reference patents (for subject and reference patents with a common owner, assignee, or inventor) or (2) that the subject and reference patents are not separately enforced (for subject and reference patents developed as a result of activities undertaken under a JRA).


To register, visit

For those attending in person, registration is required, and a picture ID must be presented, as this event is being hosted in the Federal Reserve Building. Please feel free to bring lunch. The zoom link will be emailed to registrants prior to event start.


Nicole Palmer, Lando & Anastasi
Jonathan B. Roses, Wolf Greenfield
Matt Van Eman, McCarter & English


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