The United States Patent and Trademark Office (USPTO) has proposed a significant rule change. This change could have a seismic impact on how technology companies protect their innovations. The article discusses the use of terminal disclaimers. Applicants commonly use this practice in patent prosecution to limit the term of a patent to match that of a related, commonly owned patent. At Stevens Law Group, we aim to keep you updated on the changes in the USPTO terminal disclaimer rule.
What’s Changing with the USPTO’s Proposed Terminal Disclaimer Rule?
The United States Patent and Trademark Office (USPTO) has proposed a significant rule change. This change will substantially alter the current terminal disclaimer system. Terminal disclaimers help overcome non-statutory double patent rejections during patent prosecution. These rejections occur when an applicant seeks multiple patents for obvious variations of the same invention.
Current Practice
Under the current rules, filing a terminal disclaimer means the applicant agrees to limit the term of their patent to match that of a related, commonly owned patent. Patent holders use terminal disclaimers to prevent artificially extending the patent term through multiple patents on minor variations of the same invention. Filing a terminal disclaimer does not admit that the patent claims are obvious or invalid.
Proposed Changes
The proposed rule change would introduce a new requirement for terminal disclaimers filed to overcome non-statutory double patent rejections. Under the proposed rule, the terminal disclaimer must include an agreement that the patent will become unenforceable if:
- Any claim in a patent to which a terminal disclaimer links it is found invalid or unpatentable due to prior art (anticipation or obviousness) by a federal court or the USPTO, and all appeals have been exhausted.
- A statutory disclaimer of a claim is filed after a challenge based on anticipation or obviousness has been made.
Implications for Tech Companies
The potential implications of this rule change are significant, particularly for tech companies in the software, semiconductor, and AI sectors.
Patent Thickets at Risk
Many tech companies rely on “patent thickets” – clusters of related patents that protect various aspects of their inventions. If the new rules are implemented, a single invalidated claim could dismantle an entire thicket.
Shift in Litigation Strategy
Accused infringers could strategically target a single weak claim in a patent family, potentially invalidating multiple patents with one blow. This makes post-grant challenges, like Inter Partes Review (IPR), even more attractive as a defensive strategy.
Increased Scrutiny in Patent Prosecution
Companies may need to be more cautious about filing continuation applications and more proactive in challenging terminal disclaimer requirements during the patent examination process.
Patent Portfolio Management Challenges
Maintaining common ownership of patents connected by terminal disclaimers will become crucial. Losing that common ownership could have devastating consequences under the new rules.
Here’s a table comparing the current terminal disclaimer practice with the proposed changes by the USPTO, along with the implications, pros, and cons for tech companies:
What This Means for You?
If the proposed rules are adopted, tech companies will need to reassess their patent strategies.
Rethink Continuation Practices
Consider filing patent applications with broader claim sets to potentially reduce the need for multiple related applications.
Challenge Double Patent Rejections
Invest more resources in overcoming obviousness-type double patent rejections rather than simply accepting terminal disclaimers.
Strategic Claim Drafting
Ensure that claims in related applications are sufficiently distinct to avoid nonstatutory double patent rejections.
Patent Portfolio Audit
Conduct a thorough review of existing patent families to identify vulnerabilities under the proposed rules.
How Does Stevens Law Group Help?
Stevens Law Group is closely monitoring these developments and is ready to help our clients navigate these potential changes. We will continue to provide updates and guidance as the situation evolves. While the USPTO aims to promote competition and reduce barriers to market entry, the proposed rules raise significant legal and practical concerns.
We encourage all our clients in the tech sector to stay informed and reach out to us for personalized guidance on how best to protect your intellectual property in this evolving landscape.
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