ARTICLE · 05 JUNE 2024

USPTO Proposed Rulemaking Regarding Terminal Disclaimers

Goodwin Procter LLP

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The USPTO recently issued a notice of proposed rulemaking regarding terminal disclaimers.

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The USPTO recently issued a notice of proposed rulemaking regarding terminal disclaimers. The proposed rule would require that, for patents where a terminal disclaimer was filed to overcome obviousness-type double patenting, the patentee must agree that the patent on which the terminal disclaimer was filed will be enforceable only if the patent is not tied, and has never been tied to a patent by one or more terminal disclaimers in which: 1) any claim has been finally held unpatentable or invalid under 35 USC §§ 102 or 103 (by a federal court or by the USPTO), and all appeal rights have been exhausted, or 2) a statutory disclaimer has been filed after the validity of the claim is challenged based on anticipation or obviousness.

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