USPTO Withdraws Proposed Terminal Disclaimer Rule

The United States Patent and Trademark Office (USPTO) has withdrawn a proposed rule for filing terminal disclaimers to overcome obviousness-type double patenting rejections. The proposed rule would likely have had wide implications for how patent owners choose to prosecute continuation applications.

After receiving more than 300 comments during the 60-day comment period, the USPTO has withdrawn the proposed rule. [1] Stakeholders who submitted comments included both those who supported the proposal and those who opposed it. The USPTO cited resource constraints as the rationale behind the withdrawal.

As examined in our May 2024 LawFlash, under the proposed rule [2] a terminal disclaimer would have included an agreement that the patent in which the disclaimer is filed would “be enforceable only if the patent is not tied and has never been tied directly or indirectly to a patent by one or more terminal disclaimers filed to obviate nonstatutory double patenting in which: any claim has been finally held unpatentable or invalid as anticipated or obvious by a Federal court in a civil action or by the USPTO, and all appeal rights have been exhausted; or a statutory disclaimer of a claim is filed after any challenge based on anticipation or obviousness to that claim has been made.”

In other words, patents tied together via a terminal disclaimer would fall together, i.e., if one patent is found invalid or unenforceable, other patents tied to it via a terminal disclaimer would also be unenforceable.

In proposing the new rule, the USPTO desired to promote competition and innovation by reducing the high cost of separately challenging the validity of multiple patents having claims with potentially obvious variants under obviousness-type double patenting. Under the proposed rule, a challenger could have rendered multiple patents unenforceable by successfully challenging a single claim in a single patent.

While the rule could have decreased competitors’ costs in seeking to challenge multiple patents on the same invention, patent applicants would likely have seen increased patent prosecution costs associated with choosing to argue against obviousness-type double patenting rejections, amending claims, or filing a terminal disclaimer.