The USPTO Wants to Make Things Clearer for Competing Inventors

21 / 5 / 2024

On 5 May 2024, the USPTO proposes to amend the rules of practice to add a new requirement for an acceptable terminal disclaimer that is filed to obviate 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 will be enforceable only if the patent is not tied to a patent by one or more terminal disclaimers involved.

The goal is to prevent multiple patents on obvious variants from deterring competition and to promote innovation.

The proposed rule does not require an applicant or a patentee to make a statement in the terminal disclaimer regarding conflicting claims being patentably indistinct. The new requirement has the likely advantages of reducing litigation and administrative proceeding costs and increasing predictability.

In summary, the new rule would make things clearer. If a patent relies on another (linked through a special disclaimer) and that other patent is found invalid, the first patent might not be enforceable. This should reduce court battles and encourage competition by making it easier for others to innovate without worrying about these linked patents.

The rule doesn’t affect the actual inventions themselves, just how they are enforced. Applicants who believe their inventions are truly unique can still challenge rejections or file them separately.

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