Pitfalls In Current Terminal Disclaimer Practice And Additional Problems For Patentees And Stakeholders In Proposed Changes

In the prosecution of a patent application before the U.S. Patent and Trademark Office (USPTO), under certain instances, an examiner can issue a nonstatutory obviousness-type double patenting rejection (ODP rejection) based on the claims of another reference patent or application. When facing such an ODP rejection, the filing of a terminal disclaimer in the application being prosecuted as to the reference patent or application is one avenue of overcoming the rejection.

In a terminal disclaimer, the patent applicant is agreeing that the patent issuing from the application being prosecuted will have the expiration date of the reference patent or a patent issuing from the reference application (if the ODP rejection is based on a pending application).