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ARTICLE · 31 JANUARY 2024

USPTO Rejects "Contingent" Terminal Disclaimer

Venable LLP
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On January 18, 2024, the USPTO rejected a "contingent" terminal disclaimer filed by Acadia Pharmaceuticals Inc. (Acadia) for a patent it owns...

United StatesIntellectual Property
David K. Barr
David K. Barr
Kaitlyn M. Rodnick
Kaitlyn M. Rodnick

On January 18, 2024, the USPTO rejected a "contingent" terminal disclaimer filed by Acadia Pharmaceuticals Inc. (Acadia) for a patent it owns that is being challenged in a pending litigation as invalid for obviousness-type double patenting. The USPTO ruled that terminal disclaimers could not be made contingent on the occurrence of a future event, in this case the outcome of a double patenting invalidity challenge to the subject patent.

By way of background, a terminal disclaimer filed under 35 U.S.C. § 253 is an accepted means of obviating double patenting by ensuring, among other things, that the challenged patent and the patent that formed the basis for the double patenting challenge (the "reference patent") expire on the same date. However, to be effective, the terminal disclaimer must be filed before the expiration date of the reference patent.

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