USPTO Issues Proposed Rulemaking Notice Relating to Terminal Disclaimer Practice

On May 10, 2024, the USPTO issued a notice of proposed rulemaking (89 Fed. Reg. 40439) that would amend the regulatory provisions governing submission of terminal disclaimers. The proposal would require the disclaimant (the patentee or patent applicant) to agree that the disclaimed patent will be enforceable only if it is not tied and has never been tied directly or indirectly through one or more terminal disclaimers to any patent where any claim has been held unpatentable or invalid under 35 U.S.C. 102 or 103 in Federal Court in a civil action or at the USPTO (where all appeals have been exhausted) or where a statutory disclaimer has been filed in the tied patent after any challenged based on 35 U.S.C. 102 or 103.

USPTO has indicated it will not issue a patent under the proposed rule unless the terminal disclaimer contains the statement agreeing to this enforcement condition. The notice provides that in such a situation, the Applicant must instead opt to argue and/or amend claims to obviate the nonstatutory double patenting rejection.

As drafted in proposed form, the rule is prospective and would apply to terminal disclaimers filed on or after the effective date of any final rule.

Comments on the proposed rule are being solicited by the USPTO. Timely comments to this notice of proposed rulemaking are due no later than July 9, 2024.

Read the notice here.