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ARTICLE · 16 MAY 2024

USPTO Issues Proposed Rulemaking Notice Relating To Terminal Disclaimer Practice

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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On May 10, 2024, the USPTO issued a notice of proposed rulemaking (89 Fed. Reg. 40439) that would amend the regulatory provisions governing submission of terminal disclaimers.

United StatesIntellectual Property
Mary C. Till
Mary C. Till
Jeffrey Jacobstein
Jeffrey Jacobstein
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On May 10, 2024, the USPTO issued a notice of proposed rulemaking (89 Fed. Reg. 40439) that would amend the regulatory provisions governing submission of terminal disclaimers. The proposal would require the disclaimant (the patentee or patent applicant) to agree that the disclaimed patent will be enforceable only if it is not tied and has never been tied directly or indirectly through one or more terminal disclaimers to any patent where any claim has been held unpatentable or invalid under 35 U.S.C. 102 or 103 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 challenged based on 35 U.S.C. 102 or 103.

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