Good news for patent applicants—at least for the moment—as the United States Patent and Trademark Office (USPTO) announced on December 3 that it is withdrawing its proposal to expand the statements required when filing a terminal disclaimer to obviate a double patenting rejection. On May 10, the USPTO issued a notice of proposed rulemaking (89 Fed. Reg. 40439) that would have required patent applicants (or patentees in reexaminations or reissues) to include an additional statement agreeing that a subject patent would only be enforceable if the subject patent or application had never been tied directly or indirectly to another patent by one or more terminal disclaimers in which: (1) any claim had been finally held unpatentable or invalid as anticipated or obvious (under 35 U.S.C. § 102 or 103) 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 was filed after any challenge based on anticipation or obviousness to that claim has been made.
On December 4, 2024, the Federal Register will publish a notice from the USPTO indicating that the May 10, 2024, notice of proposed rulemaking is being withdrawn. The notice gives the following reasons for the withdrawal:
During the proposed rule's 60-day comment period, the USPTO received more than 300 comments from a variety of stakeholders, including commenters both supporting and opposing the proposal. . . .
In light of resource constraints, the USPTO has decided not to move forward with the proposed rule at this time and to withdraw the proposed rule.
This means that, right now, patentees and applicants can continue to file terminal disclaimers without binding themselves to yet another limitation on enforceability of the subject patent.
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