The USPTO is proposing a drastic change to the rules surrounding
the use of terminal disclaimers to overcome non-statutory
obviousness-type double patenting rejections. The proposed rule
change would make it mandatory that for any terminal disclaimer to
be accepted, it must include an agreement that the patent in which
the terminal disclaimer is filed will be automatically
unenforceable if the patent is tied, or has ever been tied, to
another patent by one or more terminal disclaimers in which: 1) any
claim has been finally held unpatentable or invalid under 35 USC
§§ 102 or 103 (by a federal court or by the USPTO), and
all appeal rights have been exhausted, or 2) a statutory disclaimer
has been filed after the validity of the claim is challenged based
on anticipation or obviousness.
A terminal disclaimer is typically filed in response to a
non-statutory obviousness-type double patenting rejection, which is
issued when a patent application and a patent, or two pending
applications, having a common joint inventor, and/or the same
assignee or applicant are filed that include claims which are
obvious variants of each other. The terminal disclaimer currently
includes language requiring that the two or more patents which are
tied by the terminal disclaimer expire on the same date. The filing
of a terminal disclaimer ensures that the term of the patent with
the terminal disclaimer does not extend beyond the term of the
patent forming the basis of the non-statutory double patenting
rejection. This prevents an applicant/assignee from extending the
patent term for a single invention having multiple variants for
longer than the statutory 20-years-from-effective-filing term.
The reason for the rule change, according to the USPTO, is to prevent multiple patents directed to obvious variants of an invention from potentially deterring competition due to the prohibitive costs of challenging validity of each patent separately. If the rule change is implemented, a validity challenger or competitor of a patent owner may seek to narrow the scope of any federal district court litigation or USPTO post grant review proceeding to only one patent in a group that is tied by one or more terminal disclaimers.
For patent owners and patent practitioners, however, this rule change would be a dramatic change in law and practice because the current rule codified in the statute is that the validity of each patent claim must be separately adjudged. If the proposed rule change is implemented, patent practitioners may avoid the filing of terminal disclaimers altogether by amending the claims in which any obviousness-type double patenting rejection is issued such that the claims in the two or more applications are no longer obvious variants of each other.
There is currently a request for comments from various practice groups and organizations, the full text of which can be found here. Comments on the proposed rule must be received by July 9, 2024. Comments should be submitted using the Federal eRulemaking Portal at www.regulations.gov (search for PTO-P-2024-0003). Nearly all of the comments submitted to date have opposed the proposed new rule as being contrary to long-standing statutory and USPTO authority, or as upsetting long-established and well-settled expectations of patent owners who prosecuted their applications in view of the existing rules, or as exceeding the USPTO's rulemaking authority, or a number of other reasons, and combinations thereof.
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