Earlier this year, the U.S. Patent and Trademark Office (USPTO) proposed a sweeping set of rules imposing new requirements on terminal disclaimers filed to overcome obviousness-type double patenting (OTDP) rejections, and...more
The United States Patent and Trademark Office (USPTO) has withdrawn its controversial proposal to amend the rules on terminal disclaimers and double patenting.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...more
The US Patent & Trademark Office (PTO) withdrew its proposed rule that suggested major changes to its terminal disclaimer practice. 89 Fed. Reg. 96152 (Dec. 4, 2024)....more
Facing strong opposition from a rare alliance of the pharma and tech industries as well as past agency leaders, the U.S. Patent and Trademark Office (USPTO) has withdrawn a proposed new rule directed at Terminal Disclaimer...more
The U.S. Patent and Trademark Office ("USPTO") has withdrawn its proposed rule regarding terminal disclaimer requirements....more
On December 4, 2024, nearly seven months after issuing a Notice of Proposed Rulemaking that proposed major and controversial changes to terminal disclaimer practice, which we previously discussed in an earlier blog post, the...more
In a highly anticipated decision in Allergan v. MSN Labs., the Federal Circuit held yesterday that claims in a first-filed, first-issued, later-expiring patent cannot be invalidated for double patenting by claims in a...more
The United States Patent and Trademark Office (“USPTO”) periodically evaluates the delicate balance of the U.S. patent system to protect innovation without excessively stifling competition. U.S. patents give patent owners the...more
July 17, 2024 Applicant-submitted terminal disclaimers tie similar co-owned patents to a common expiration date and typically serve to ensure that a later-filed continuation application lives no longer than its parent. The...more
On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking that, if enacted, would tie the enforceability of every claim of a patent subject to a terminal disclaimer to the...more
This CLE webinar will guide patent counsel on obviousness-type double patenting (ODP), including the recent decisions that have relied on Cellect. The panel will also discuss the USPTO's proposed terminal disclaimer rule and...more
On May 10, the US Patent and Trademark Office (USPTO) released proposed amendments to the rules of practice to add a new requirement for terminal disclaimers filed to prevent non-statutory double patenting....more
In the Notice, the USPTO proposed adding a new requirement for acceptable terminal disclaimers to obviate nonstatutory double patenting. The stated goal for this rule change is “to promote competition by lowering the cost of...more
The United States Patent and Trademark Office (USPTO) is facing vigorous backlash to its proposal to change terminal disclaimer practice used in patent applications and, not so subtly, discourage the use of continuation...more
A recent case in the Western District of Oklahoma shines a spotlight on the patent danger posed by errors in a terminal disclaimer. In this case, a typographical error in the filed terminal disclaimer rendered an ensuing...more
As discussed previously on this blog (see "USPTO Proposed Rule Change to Terminal Disclaimer Practice" and "The USPTO's Proposed Terminal Disclaimer Rule: A Litigator's Perspective") and elsewhere, the U.S. Patent and...more
The USPTO recently issued a notice of proposed rulemaking regarding terminal disclaimers. ...more
On May 10, 2024, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking (Notice) concerning major changes to the terminal disclaimer (TD) practice, which may lead to a sea change in patent prosecution...more
On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (Notice) proposing changes to terminal disclaimer (TD) practice....more
On 10 May 2024, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking aimed at changing the current practices surrounding terminal disclaimers. The proposed change could have...more
On Friday, May 10, 2024, the USPTO issued a notice of proposed rulemaking in the Federal Register directed at amending the rules of practice to add a requirement for terminal disclaimers filed to overcome rejections for...more
On May 10, 2024, the United States Patent and Trademark Office (“USPTO”) published a notice of proposed rulemaking in the Federal Register that could dramatically impact prosecution practices, especially for those...more
On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking to add a new requirement for terminal disclaimers filed to obviate nonstatutory double patenting rejections to the...more
As discussed at length in a previous post on this blog (see "USPTO Proposed Rule Change to Terminal Disclaimer Practice"), the U.S. Patent and Trademark Office has proposed amending the form of terminal disclaimer to be used...more
The US Patent and Trademark Office (USPTO) recently proposed a new rule for filing terminal disclaimers to overcome obviousness-type double patenting rejections. If adopted, the rule will likely spur patent applicants to...more