USPTO proposes changes to terminal disclaimer practice

The US Patent and Trademark Office (USPTO) recently suggested a new regulation for submitting terminal disclaimers to overcome obviousness-type double patenting rejections, that could significantly impact patent practice.

Under this new rule, a terminal disclaimer would contain an agreement that the patent in which the disclaimer is submitted would not be enforceable if a claim in another patent tied to the subject patent through the terminal disclaimer is found to be unpatentable or invalid. In essence, patents tied through a terminal disclaimer would be treated together, meaning that if one patent is deemed invalid or unenforceable, the others connected to it via a terminal disclaimer would also be invalid/unenforceable.

In the current practice of terminal disclaimers, a patent owner may file multiple applications with the same effective filing date, where the sets of claims in each application are distinct variations of the same invention that can avoid a statutory double patenting rejection. However, the USPTO may still determine that the differences in the claims between patents are obvious under the obviousness-type double patenting doctrine.

An obviousness-type double patenting rejection can occur if the claims in different patents or patent applications share the same inventive entity, at least one inventor in common, or a common applicant, owner, or assignee. When faced with an obviousness-type double patenting rejection, applicants have the option to challenge the rejection, amend the claims, or submit a terminal disclaimer, which is a common approach.

The USPTO has outlined several reasons for the proposed modifications. The main concern is that an owner of multiple patents covering obvious variations of an invention could hinder competition, as the expense of disputing the validity of each patent individually could be prohibitive. By tying the disclaimed patents, a competitor could potentially invalidate multiple patents by proving the anticipation or obviousness of one claim, leading to significant reductions in litigation costs. The USPTO also believes that the changes will encourage innovation by making it more difficult to maintain patents on minor variations. If applicants are aware that their continuation patents may be more vulnerable, they may be more discerning in their pursuits.