TAKEAWAY: The USPTO announced that an agreement may be required to accompany terminal disclaimers.
The USPTO has proposed a rule change related to terminal disclaimers that addresses nonstatutory double patenting rejections. The proposed requirement would mandate that an applicant agree that the disclaimed patent will be enforceable only if it is not tied through one or more terminal disclaimers to any patent where a claim has been held unpatentable or invalid under 35 U.S.C. 102 or 103, such as in Federal Court in a civil action or at the USPTO (where all appeals have been exhausted), or where a statutory disclaimer has been filed in the tied patent after any challenge based on 35 U.S.C. 102 or 103.
The USPTO explains that the goal of the proposed rule is to prevent multiple patents on obvious variants from hindering competition and to promote innovation by allowing competitors to avoid enforcement of such tied patents. The rule would revise enforcement provisions in 37 CFR 1.321(c) and (d). Applicants may still challenge rejections or separate patentably distinct claims in order to avoid filing terminal disclaimers.
The USPTO is accepting comments on the proposed rule change for submission. To ensure consideration, comments must be received by July 9, 2024 through the Federal eRulemaking Portal.
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