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ARTICLE · 17 DECEMBER 2024

PTO Withdraws Proposed Rule On Terminal Disclaimer Changes

McDermott Will & Emery
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The US Patent & Trademark Office (PTO) withdrew its proposed rule that suggested major changes to its terminal disclaimer practice. 89 Fed. Reg. 96152 (Dec. 4, 2024).

United StatesIntellectual Property
Amol Parikh
Amol Parikh
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The US Patent & Trademark Office (PTO) withdrew its proposed rule that suggested major changes to its terminal disclaimer practice. 89 Fed. Reg. 96152 (Dec. 4, 2024).

In May 2024, the PTO issued a Notice of Proposed Rulemaking that would have required a terminal disclaimer to include an agreement that a patent would be unenforceable if it was tied directly or indirectly to another patent having any claim invalidated or cancelled based on prior art. During the proposed rule's 60-day comment period, the PTO received more than 300 comments from a variety of stakeholders that both supported and opposed the proposal.

The PTO issued a notice withdrawing the proposal, explaining that in light of resource constraints, it decided not to move forward.

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