Free Post: Not Yet in Effect: Clarifying Misconceptions About the USPTO’s Proposed Terminal Disclaimer Rule
Patent – Patently-O 2024-09-25
Summary:
by Dennis Crouch
I wanted to provide a quick update on potential misinformation that came out in a panel that I was part of at the IPO annual conference. One speaker noted that the USPTO terminal disclaimer rules were already in effect. That is not true. In May 2024, the agency released a notice of proposed rulemaking (NPRM) and has not yet indicated whether it will finalize the rules. Terminal disclaimers filed today are not bound by the potential rule that appears to be intended to apply only prospectively to new terminal disclaimers filed after the rule goes into effect. The disclaimer process is a formal written process, and the proposed rule would require new language to be included in terminal disclaimers filed to obviate nonstatutory double patenting. And seemingly, this new required language would only apply to terminal disclaimers filed after the rule becomes effective.
Although the proposed rule is not yet in effect, it may soon be finalized. And, once finalized would have a dramatic impact on terminal disclaimer and continuation practice in the U.S. Many of us believe that the rules – in their current form – are unlikely to be enforceable. However there is a key difference between requiring a party to sign a disclaimer, and the impact of such a disclaimer if signed.