USPTO Withdraws Proposed Rule Targeting Terminal Disclosures

The USPTO is withdrawing the proposed new rule which was published in the Federal Register in May 2024. The new rule effectively proposed patent applicants for terminal disclaimers to agree that invalidating the parent patent claim would render related terminal disclaimer patents unenforceable. The intent behind the new rule was to make it easier for an infringer to challenge a group of patents tied to parent patent. Currently, each patent must be challenged separately, making it prohibitively costly for generic companies to challenge an innovator’s patent.

The new rule proposed that for an acceptable filing of terminal disclaimer, the disclaimant should include an agreement that the patent in which a terminal disclosure is filed will be enforceable only if the patent is not tied to a patent by one or more terminal disclaimers. This was proposed to prevent multiple patents from potentially deterring competition and to allow competition to avoid the enforcement of patents actually held unpatentable by means of one or more terminal disclaimers tied to the patent. Innovator companies often use the strategy of filing short-term terminal disclaimer patents with minor variations to the patented innovation, to make the process of challenging patents cumbersome as each such patents has to be challenged separately.

Innovator companies had severely criticized the proposed rule which generic companies were in favour of the new proposal. However the withdrawal of the proposed new rule means that the current practices for terminal disclaimers will remain unchanged for now.

Reverences:

• USPTO: Terminal Disclaimer Practice To Obviate Nonstatutory Double Patenting; Withdrawal
• Federal Register / Vol. 89, No. 92 / Friday, May 10, 2024 / Proposed Rules