Member Article

Patent owners with robust continuation filing strategies can breathe a sigh of relief as the United States Patent and Trademark Office (“USPTO”) has withdrawn a proposed rule, which would have weakened patents linked to one another via a terminal disclaimer(s).[1]

For background, terminal disclaimers are often filed during prosecution of a patent application to overcome, nonstatutory, obvious-type double patenting rejections over another patent (or in some cases, a co-pending application).  Essentially, the terminal disclaimer limits the term of the resulting patent to that of the other patent, presumably, to prevent a patent owner from unfairly extending the term of patent protection.

On May 10, 2024, Kathy Vidal, the Director of the USPTO, proposed a rule that would have effectively rendered unenforceable, without due process, any patent linked via a terminal disclaimer to any patent including an invalidated claim.[2]  To accomplish this, the proposed rule would have added an agreement provision to terminal disclaimers requiring the disclaimant to agree:

that the patent in which the terminal disclaimer is filed, or any patent granted on an application in which a terminal disclaimer is filed, will be enforceable only if the patent is not tied and has never been tied directly or indirectly to a patent by one or more terminal disclaimers filed to obviate nonstatutory double patenting in which: any claim has been finally held unpatentable or invalid as anticipated or obvious by a Federal court in a civil action or by the USPTO, and all appeal rights have been exhausted; or a statutory disclaimer of a claim is filed after any challenge based on anticipation or obviousness to that claim has been made.[3]

After receiving over 300 comments and citing “resource constraints,” the USPTO withdrew the proposed rule.[4] This announcement came soon after Vidal announced she would be stepping down as director, effective the second week of December.

Going forward, patent owners may still file terminal disclaimers to overcome nonstatutory double patenting rejections.  Some questions to consider in filing a terminal disclaimer include:

• Is the double patenting rejection asserted against otherwise allowed claims? If not, the rejection is not ripe.
• Are the claims of the application actually obvious variants over the other patent/application? If not, the rejection is incorrect.
• Would the application have the same term regardless of whether a terminal disclaimer is filed? If so, filing a terminal disclaimer may lead to a faster allowance.
• Are any claims not subject to the nonstatutory double patent rejection? If so, it may be beneficial to file those claims in a continuation.

If you would like to further discuss the pros and cons of filing a terminal disclaimer during prosecution, please contact the author of this article or another Dinsmore intellectual property attorney.

[1] “Terminal Disclaimer Practice To Obviate Nonstatutory Double Patenting; Withdrawal,” 89 Fed. Reg. 96152 (December 4, 2024).

[2] See “Terminal Disclaimer Practice to Obviate Nonstatutory Double Patenting,” 89 Fed. Reg. 40439 (May 10, 2024).

[3] Id.(emphasis added).

[4] 89 Fed. Reg. 96152.