Notice Of Proposed Rulemaking: Changes To Terminal Disclaimer Practice

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking proposing a major change to the rules of practice involving terminal disclaimers. The proposed rule would add the requirement that a party filing a terminal disclaimer agree that the subject patent will be unenforceable if the disclaimer ties it to another patent in which any claim has been held invalid over prior art. According to the USPTO, the proposed rule is intended to prevent patents directed to obvious variants of an invention from potentially deterring competition and to promote innovation and competition.

Current Practice

Under current U.S. patent law, an inventor may obtain more than one patent having claims that are directed to similar or obvious variants of one another. However, the USPTO will reject these claims for "obviousness-type double patenting" (ODP), also known as non-statutory double patenting. The ODP rejection arises from the