Burr & Forman Partner and Intellectual Property Attorney Nate Quirk’s article “The termination of patent terminal disclaimers?” was published on June 21, 2024 in WestLaw Today distributed across multiple newsletters.

The article discusses the proposed United States Patent and Trademark Office (USPTO) rule change that significantly impacts patent practice in the U.S., particularly the continuation patent practice. The proposed rule is frequently used to overcome a non-statutory double patenting — the terminal disclaimer.

Currently, terminal disclaimers link a later-filed application with an earlier patent. Despite the terminal disclaimer link between patents, from a validity perspective, the patents are independent and stand alone. This is beneficial to patent owners because many separate and costly patent validity battles must be fought and won to eliminate the entire family of patents amounting to an extremely costly endeavor to undertake. However, the new rule mandates that if one claim in any terminal disclaimer-linked patent is invalidated, all linked patents would become unenforceable. Rather than having to attack each member patent of the family in a separate action, a party could simply attack one, maybe the most venerable, patent in the family, and if successful, the entire family would fall together.

While some might consider the new rule a way to balance the playing field for patent challengers/defendants, the detrimental effect on patent owners and their reliance upon the use of terminal disclaimers could be staggering. Continuation filings would drop markedly, essentially eliminating the value of a highly-used strategic portfolio building tool that has been leveraged by patent owners. Patent applicants might prioritize obtaining a broad scope in their initial filings, as opposed to relying on continuation applications.

The USPTO is accepting public comments on this proposed rule until July 9, 2024.

For the full article, please click here.