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ARTICLE · 16 MAY 2024

USPTO Aims To Mow Down Patent Thickets

Foley & Lardner LLP
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In a stunning Federal Register Notice published May 10, 2024, the U.S. Patent and Trademark Office (USPTO) proposes to impose a new requirement on terminal disclaimers filed to overcome obviousness-type double patenting (OTDP) rejections.

United StatesIntellectual Property
Courtenay Brinckerhoff
Courtenay Brinckerhoff
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In a stunning Federal Register Notice published May 10, 2024, the U.S. Patent and Trademark Office (USPTO) proposes to impose a new requirement on terminal disclaimers filed to overcome obviousness-type double patenting (OTDP) rejections. The USPTO would require the application/patent owner to agree that the subject patent will not be enforceable if any claim in the cited patent has been finally held unpatentable or invalid as anticipated or obvious by a Federal court in a civil action or by the USPTO, or if any claim in the cited patent has been statutorily disclaimed after any prior art challenge has been made. This proposal is aimed directly at so-called "patent thickets" alleged to improperly deter generic drug competition but would undermine the ability to fully protect inventions across all technology areas.

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