USPTO Backs Off On Proposed Rule Regarding Terminal Disclaimers

Written by Ben Esplin

Earlier today, the USPTO withdrew a proposed rule that would have dramatically effected the relatively common practice of filing a “terminal disclaimer” to overcome a judicially-created rejection commonly known as “obviousness-type double patenting” (see this link).

Obviousness-type double patenting rejections typically appear in continuation applications where the claims have similarities with earlier filed patent applications in the family. Currently, the filing of a terminal disclaimer in the continuation application serves to overcome the rejection, but places limitations on the enforceability of the patent that issues from the continuation and the earlier patents upon which the rejection (or rejections) is based. The most significant restriction on enforcement currently in place is that the patent which issues from the continuation must be commonly assigned with the patent(s) used to make the rejection.

The proposed rule would have made the continuation application unenforceable if any claim in any terminally disclaimed patent were found to be invalid. It is commonly believed this would have eviscerated the value of families of patents in which terminal disclaimers had been filed, because invalidating a single claim in one of the patents of a given patent family would have rendered the other patents in the family unenforceable even if all the claims in those patents were found to be valid. The proposed rule also would have been retroactive to all previously filed terminal disclaimers. Needless to say, the proposed rule was widely, and roundly, criticized, and likely would have faced significant Constitutional challenges.

Upon receiving this news, which was not completely unexpected, my feeling was relief. One well known commentator called the proposed rule “outrageously stupid,” and I had not heard a single argument to the contrary that made a lick of sense.

This announcement follows on the heels of a withdrawal of another proposal by the USPTO to increase fees significantly (up to 700% for some fees) in favor of an approach that raises fees across the board by 7.5% (see this link). These now-defunct proposals issued in 2024 made the USPTO seem completely out of touch with its mission, and the importance of the patent system to innovation in the U.S. Thank goodness cooler heads prevailed.