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ARTICLE · 23 DECEMBER 2024

USPTO Drops Proposed Rules On Terminal Disclaimers

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Earlier this year, the U.S. Patent and Trademark Office (USPTO) proposed a sweeping set of rules imposing new requirements on terminal disclaimers filed to overcome...

United StatesIntellectual Property
Benjamin Berkowitz
Benjamin Berkowitz
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Earlier this year, the U.S. Patent and Trademark Office (USPTO) proposed a sweeping set of rules imposing new requirements on terminal disclaimers filed to overcome obviousness-type double patenting (OTDP) rejections, and separately proposed to impose new terminal disclaimer fees that would increase exponentially over the course of examination. The USPTO has since dropped both proposals, but Congressional concern about so-called patent thickets remain, and could lead to legislative action.

Withdrawal of Proposed Rules Imposing New Terminal Disclaimer Conditions

In May 2024, the USPTO proposed to impose new conditions on terminal disclaimers requiring 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

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