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ARTICLE · 19 MAY 2024

USPTO Proposed Terminal Disclaimer Can Terminate Patents

Wolf, Greenfield & Sacks, P.C.
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The USPTO on May 10, 2024, issued a notice of proposed rulemaking (NPRM) raising the requirements for accepting a Terminal Disclaimer (TD) to obviate obviousness-type double patenting (ODP).

United StatesIntellectual Property
Wolf, Greenfield & Sacks, P.C.
Wolf, Greenfield & Sacks, P.C.
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The USPTO on May 10, 2024, issued a notice of proposed rulemaking (NPRM) raising the requirements for accepting a Terminal Disclaimer (TD) to obviate obviousness-type double patenting (ODP). Specifically, the newly proposed TD requires those filing a TD in a patent or application to agree that the patent in which the TD was filed ("subject patent") will be unenforceable in its entirety if, in the patent over which the TD was filed ("reference patent"), any claim is subsequently and finally deemed unpatentable or invalid over prior art under 35 U.S.C. §102 or §103.

Terminal disclaimers currently

Currently, the USPTO requires a TD to disclaim the term of the subject patent that extends beyond the term of the reference patent and to include an agreement that the subject patent will be enforceable only while the subject patent and the reference patent are commonly owned (or for TDs pertaining to Joint Research Agreements, that such patents will not be separately

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