The USPTO Proposes A Terminal Disclaimer Rule Change

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.