The U.S. Patent and Trademark Office (USPTO) is considering changing some rules that affect how patents are handled. These changes focus on a complex issue called 'non-statutory double patenting,' which basically means getting two patents for the same invention.

One key part of the proposed changes involves the 'terminal disclaimer,' a tool often used to get around the double patenting rules. Basically, the terminal disclaimer says that a later patent will expire at the same time as an earlier patent for the same invention, which avoids any legal problems.

The Complexities of Double Patenting and Terminal Disclaimers:
Double patenting is a rule that stops people from getting multiple patents for the same invention. While the law doesn't allow identical patents, it does allow for minor changes in the claims of later patents, which can lead to overlapping or similar patents. This loophole is addressed by another rule called 'non-statutory double patenting', which prevents getting a second patent for an invention that's basically the same as a previous one, even if there are minor changes.

To avoid this issue, people applying for patents can use a 'terminal disclaimer'. This links their later patent to the earlier one, making them expire at the same time. This eliminates the possibility of double patenting problems.

Current Impact of Terminal Disclaimers:
A terminal disclaimer is a legal tool used to ensure that two patents, even if filed at different times, are treated as if they expire on the same date. This prevents the later patent from getting an extended term beyond the earlier patent's expiration. Additionally, the disclaimer requires both patents to remain under the same ownership, preventing them from being sold or transferred separately. Importantly, even though these patents are linked by the disclaimer, they are still considered independent and the invalidity of one patent doesn't affect the validity of the other.

Proposed Rule Change:
The USPTO's proposed rule change (Federal Register / Vol. 89, No. 92, May 10, 2024) marks a substantial shift by linking the validity of terminal disclaimer-linked patents. Under the new rule, if any claim within a terminal disclaimer-linked patent is deemed invalid, all associated patents will become unenforceable or abandoned, effectively invalidating the entire patent chain.

Implications for Patent Practice:
The proposed rule change, if enacted, would drastically impact U.S. patent prosecution and filing strategies. The current practice of casually filing terminal disclaimers to circumvent non-statutory double patenting rejections would become significantly riskier. Applicants would be compelled to fight these rejections more aggressively, leading to longer and more expensive prosecution processes.

Furthermore, applicants would prioritize securing the broadest and most advantageous patent scope in their initial filings. This is because continuation filings, potentially jeopardizing strategically valuable patents, would become less desirable. The proposed rule could also benefit patent challengers, simplifying the process of invalidating entire patent families and reducing financial and logistical burdens.

Potential Industry Impact:
The proposed rule change could significantly impact patent owners, potentially hindering their ability to build robust patent portfolios. Continuation filings, a strategic tool for obtaining multiple patents with slight variations from a single priority application, would likely decrease drastically. This shift would force patent owners to re-evaluate their existing strategies, potentially limiting their ability to secure comprehensive patent protection.

Public Response and Future Considerations:
The USPTO is inviting public input on the proposed rule change concerning terminal disclaimers, with a deadline of July 9, 2024. These comments will provide valuable perspectives from patent owners and challengers, influencing the likelihood of the rule being implemented in its present form.

The proposed rule change has the potential to reshape U.S. patent law by addressing double patenting concerns. However, it is crucial for the USPTO to thoroughly evaluate all feedback before finalizing the rule, considering its substantial impact on the patent landscape and the strategies employed by patent owners and challengers.

Written By: Md.Imran Wahab, IPS, IGP, Provisioning, West Bengal
Email: [email protected], Ph no: 9836576565