USPTO Abandons Double Patenting Rule: A Victory for Continuation Strategy

The United States Patent and Trademark Office (USPTO) has withdrawn its controversial proposal to amend the rules on terminal disclaimers and double patenting. This decision marks a significant triumph for advocates of continuation patent strategies and the broader innovation ecosystem.

The proposed rule sought to extend the implications of terminal disclaimers. Terminal disclaimers are often required for continuation patent applications, which are a type of patent filing that allows an applicant to pursue additional claims based on an earlier, parent application while retaining the original filing date. Continuation patent applications allow inventors to refine claims, pursue broader or narrower protection, and adapt to evolving technologies or market conditions, thereby maximizing the value of their innovations. Filing continuation patent applications can create a “patent thicket” to protect critical products.

Patent examiners often require that applicants file terminal disclaimers between continuation patent applications and the parent applications. Historically, terminal disclaimers allow multiple patents on closely related inventions to coexist as long as they share the same expiration date and ownership. The proposal aimed to further bind such continuation applications by stipulating that the invalidation of one patent would automatically invalidate the others.

While the rule gained support from organizations advocating for cheaper drug prices—such as Kaiser Permanente, the Federal Trade Commission, and nonprofit advocacy groups—its detractors raised serious concerns about its legality and impact on innovation. Prominent voices, including former USPTO Directors David Kappos and Andrei Iancu, argued that the rule overstepped the USPTO’s statutory authority by creating a substantive change in patent law. Additionally, they warned of the chilling effect such a measure could have on the incentive to innovate, particularly for industries reliant on continuation strategies, particularly software and tech companies.

The withdrawal has been lauded by stakeholders across the innovation spectrum, including major corporations like Qualcomm, Ericsson, and Koninklijke Philips, as well as Senator Thom Tillis and organizations like the Council for Innovation Promotion (C4IP). Frank Cullen, C4IP’s Executive Director, celebrated the decision, emphasizing that it preserves inventors' ability to secure robust patent protection without excessive costs or confusion.

This development reinforces the value of continuation strategies and ensures stability for inventors leveraging the patent system to protect and commercialize their innovations. The USPTO’s decision affirms the importance of balancing patent reforms with the need to sustain an environment conducive to innovation.