USPTO Introduces Proposed Rule Regarding Terminal Disclaimer PracticeJune 3, 2024

On May 10, 2024, a proposed rule, introduced by the United States Patent and Trademark Office (USPTO), regarding the use of terminal disclaimers to obviate nonstatutory double patenting rejections was published in the Federal Register.

A double patenting rejection can arise when two applications, or an application and an issued patent, have some commonality of inventorship and/or ownership and do not have patentably distinct claims. Two types of double patenting rejections exist: (1) statutory double patenting rejections, and (2) nonstatutory double patenting rejections. Statutory double patenting rejections are based on 35 U.S.C. 101 which provides that an inventor may obtain “a patent”, rather than multiple patents, for an invention. Thus, statutory double patenting rejections prevent a common inventor or owner from obtaining multiple patents for identical claims, i.e., the same invention. The idea of nonstatutory double patenting is a judicially created doctrine, wherein nonstatutory double patenting rejections arise when a second application includes at least one claim that is different from the claims of a first application, or issued patent, but is not patentably distinct and wherein the second application and first application, or issued patent, have commonality of inventorship and/or ownership. A claim in the second application can be deemed as not patentably distinct from claims in the first application, or patent, based on obviousness. 

One reason behind the judicial creation of rejections based on nonstatutory double patenting was to prevent inventors from improperly extending the term of patent rights by continuing to file similar claims in continuation applications wherein the similar claims are not patentably distinct from the claims of a previously filed application. Historically, patent applicants often overcome nonstatutory double patenting rejections by filing a terminal disclaimer in the application in which claim(s) are rejected. A terminal disclaimer disclaims all or a portion of the term of a patent. In order to overcome a nonstatutory double patenting rejection, an applicant can file a terminal disclaimer in the application in which the rejection is made, wherein the terminal disclaimer disclaims any portion of the term of a patent granted on said application that extends beyond the term of a reference application, or patent, upon which the rejection is based. Thus, by filing the terminal disclaimer, the applicant agrees that the application in which the terminal disclaimer is filed is not enforceable beyond the term of the reference application, or patent, upon which the rejection is based.

The proposed rule at issue, if finalized and put into effect, would represent a significant shift in terminal disclaimer practice related to nonstatutory double patenting rejections. The language of the proposed rule provides:

[t]he USPTO proposes to revise the enforcement provisions in 37 CFR 1.321(c) and (d) to require that a terminal disclaimer filed to obviate nonstatutory double patenting include an agreement by the disclaimant that the subject patent or any patent granted on the subject application shall 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: (1) any claim has been finally held unpatentable or invalid under 35 U.S.C. 102 or 103 (statutory provisions for anticipation or obviousness as referred to in the SUMMARY above) by a Federal court in a civil action or by the USPTO, and all appeal rights have been exhausted; or (2) a statutory disclaimer of a claim is filed after any challenge based on 35 U.S.C. 102 or 103 to that claim has been made.

A major aspect of the proposed rule is that it requires that if a terminal disclaimer is filed in a patent, or patent application, to overcome a nonstatutory double patenting rejection, the disclaimant must agree that said patent, or any patent granted on said application, in which the terminal disclaimer is filed (“the terminally disclaimed patent”) will not be enforceable in the event that any claim of a patent to which the terminally disclaimed patent is linked, directly or indirectly, via one or more terminal disclaimers is held to be anticipated or obvious in view of prior art (such as by a Federal court in a civil action or by the USPTO).

Thus, if the proposed rule goes into effect, it would potentially have major implications in terms of enforceability of patents tied together via terminal disclaimer(s). A single patent claim being held unpatentable or invalid due to anticipation or obviousness could potentially render multiple patents to be unenforceable. If the proposed rule is finalized, it is important for patentees and patent practitioners to be aware of the implications of filing a terminal disclaimer to overcome a nonstatutory double patenting rejection.

Comments regarding the proposed rule must be submitted via the Federal eRulemaking Portal at https://www.regulations.gov/ by July 9, 2024.

Joseph M. Hallman is a Patent Attorney in the Mechanical and Electrical Patent Practice Groups at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Joseph directly via email at joseph.hallman@ipmvs.com.