USPTO withdraws the terminal disclaimer proposal that would have tied a family's enforceability to its weakest claim

2024-12-04Costs

Terminal Disclaimer Practice To Obviate Nonstatutory Double Patenting; Withdrawal, 89 Fed. Reg. 96152 (Dec. 4, 2024), withdrawing the proposed rule at 89 Fed. Reg. 40439 (May 10, 2024)

The United States Patent and Trademark Office withdrew, as of December 4, 2024, its May 10, 2024 proposed rule on terminal disclaimer practice, stating that "in light of resource constraints" it has decided not to move forward at this time and that it will continue engaging with stakeholders. The proposal would have amended 37 C.F.R. 1.321 so that a terminal disclaimer filed to obviate nonstatutory double patenting had to include an agreement that the patent would be enforceable only if it "is not tied and has never been tied directly or indirectly to a patent by one or more terminal disclaimers" in which a claim "has been finally held unpatentable or invalid under 35 U.S.C. 102 or 103" in a federal court or at the Office with all appeal rights exhausted, or in which a claim was statutorily disclaimed after such a challenge was made. The Office's stated aim was to "prevent multiple patents directed to obvious variants of an invention from potentially deterring competition," given "the prohibitive cost of challenging each patent separately in litigation or administrative proceedings." The comment period closed July 9, 2024; the Office received more than 300 comments, 256 of them unique, from commenters both supporting and opposing the proposal. Director Katherine K. Vidal signed the withdrawal, which leaves 37 C.F.R. 1.321 and current terminal disclaimer practice unchanged.

What it changesContinuation families keep their independence. Under the proposal, one claim of one family member held anticipated or obvious in an inter partes review would have made every patent tied to it by terminal disclaimer unenforceable, which would have turned the usual artificial intelligence family, a parent on the training method and continuations on serving, fine-tuning and interface variants, into a single point of failure. With the proposal withdrawn, continuation strategy can proceed as before, with two cautions. In re Cellect still counts patent term adjustment in the double patenting analysis, so a family member whose claims are not patentably distinct from an earlier-expiring relative can be invalid unless a terminal disclaimer gives up the extra term; draft the claim sets in a family to be patentably distinct wherever the engineering supports it. And the withdrawal rests on resources, not the merits, so a company that relies on tied families should keep its arguments ready in case the proposal returns in another form.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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