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ARTICLE · 31 MAY 2024

USPTO Issues Proposed Rule On A New Terminal Disclaimer Requirement

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The U.S. Patent and Trademark Office (USPTO) has proposed a new rule that would change the requirements for filing a terminal disclaimer to overcome an obviousness-type double patenting rejection.

United StatesIntellectual Property
Daniel L. Reisner
Daniel L. Reisner
Alice Ho
Alice Ho
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The U.S. Patent and Trademark Office (USPTO) has proposed a new rule that would change the requirements for filing a terminal disclaimer to overcome an obviousness-type double patenting rejection. Under the proposed rule, a terminal disclaimer filed to obviate obviousness-type double patenting would be required to include an agreement by the disclaimant that the patent will be unenforceable if any claim in another patent tied to the first patent through the terminal disclaimer (or chain of terminal disclaimers) is:

  1. Finally held unpatentable or invalid based on anticipation or obviousness by a federal court or the USPTO after exhausting all appeals
  2. Abandoned through the filing of a statutory disclaimer after any anticipation or obviousness challenge has been made against that claim

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