Data / Federal rules / 2024-10166
Terminal Disclaimer Practice To Obviate Nonstatutory Double Patenting
The Patent and Trademark Office published this proposed rule in the Federal Register on May 10, 2024. Comments closed on July 9, 2024.
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What the agency says
The USPTO proposes to amend the rules of practice to add a new requirement for an acceptable terminal disclaimer that is filed to obviate (that is, overcome) nonstatutory double patenting. The proposed rule change would require terminal disclaimers filed to obviate nonstatutory double patenting to include an agreement by the disclaimant that the patent in which the terminal disclaimer is filed, or any patent granted on an application in which a terminal disclaimer is filed, will be enforceable only if the patent is not tied and has never been tied directly or indirectly to a patent by one or more terminal disclaimers filed to obviate nonstatutory double patenting in which: any claim has been finally held unpatentable or invalid as anticipated or obvious by a Federal court in a civil action or by the USPTO, and all appeal rights have been exhausted; or a statutory disclaimer of a claim is filed after any challenge based on anticipation or obviousness to that claim has been made. This action is being taken to prevent multiple patents directed to obvious variants of an invention from potentially deterring competition and to promote innovation and competition by allowing a competitor to avoid enforcement of patents tied by one or more terminal disclaimers to another patent having a claim finally held unpatentable or invalid over prior art.
Key facts
- Document number
- 2024-10166
- Type
- Proposed rule
- Action
- Notice of proposed rulemaking
- Agency
- Commerce Department; Patent and Trademark Office
- Published
- May 10, 2024
- Comments due
- July 9, 2024
- Dates
- Comments must be received by July 9, 2024 to ensure consideration.
- Docket
- Docket No. PTO-P-2024-0003
- Regulation ID (RIN)
- 0651-AD76
- Code of Federal Regulations
- 37 CFR 1
- Topics
- Administrative practice and procedure; Biologics; Courts; Freedom of information; Inventions and patents; Reporting and recordkeeping requirements; Small businesses
- Pages
- 11
Other documents from the Patent and Trademark Office
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