An Open Letter to the United States Patent and Trademark Office

Dear Director Vidal,

Renner, Otto, Boisselle, and Sklar, LLP (“Renner Otto”) is a century-old, intellectual property law firm located in Cleveland, Ohio, that represents a wide variety of clients, both large and small, and both domestic clients and clients outside the United States. We write today to encourage the USPTO not to adopt the proposed rules regarding terminal disclaimers.

First, the proposed rules appear to exceed the USPTO’s rulemaking authority, and undermine the bedrock principle that each patent claim is treated separately, as is stated in 35 USC 282(a): “Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim.” Since this principle is statutory (as well as being supported by case law), it is beyond the power of the USPTO to alter the effect of the statute by using its rulemaking authority.

The proposed rules also introduce a formalism that treats claims differently depending on whether they are in different patents or the same patent. In the former situation (claims in different patents), if the patents were linked by a terminal disclaimer, invalidity of a single claim can render the other patent invalid in its entirety. (It is appreciated that the proposed rulemaking makes a distinction between invalidity and unenforceability, but the practical effect of the two is the same.) This is the case even if the terminal disclaimer was filed for a reason unconnected with the invalid claim. In contrast, in the latter situation (all claims in a single patent) every claim stands or falls on its own, and invalidity of some claims has no legal effect on the remaining claims.

Increases in time and cost for prosecution should also be expected if the proposed terminal disclaimer rules are adopted. Applicants would be expected to avoid terminal disclaimers by delaying the issuance of patents, even where claims are allowed, to file requests for continued examination or continuation applications, to try to obtain additional claim coverage, and/or to force restriction and/or election of species requirements (in order to take advantage of the safe harbor provisions of 35 USC 121).

The proposed rules would subject entire patent families to effective invalidation if only a single claim in one patent can be invalidated. This would discourage applicants from obtaining in multiple related patents all the coverage to which they are entitled, lest a single invalid claim cause one or more other patents to be rendered unenforceable in their entireties. Caution would be the watchword for applicants, since there would be a tangible risk in every allowed claim, even when approved by an Examiner.

Finally, the proposed rules, if adopted, would leave applicants between a rock and a hard place when it comes to terminal disclaimers. On the one hand, in cases such as In re Cellect, 81 F. 4th 1216 (Fed. Cir. 2023), patents have been invalidated because of the failure to file terminal disclaimers, even when no double-patenting rejection was made during prosecution at the USPTO. On the other hand, the proposed rules make filing terminal disclaimers dangerous, regardless of whether a double-patenting rejection has been made during prosecution.

It is worth noting that other, less extreme solutions are available to tackle the “problem” cited as the basis for the proposed rule changes, that where “obvious variants of an invention could deter competition due to the prohibitive cost of challenging each patent separately in litigation or administrative proceedings,” 89 FR at 40439. For instance, a softer approach would be that invalidity of a claim only affects other claims in the patent family that were subject to obviousness-type double-patenting rejections that led to the filing of terminal disclaimers. As another alternative the effect of invalidity of a claim might be limited to a presumption, rather than being a conclusive finding of unenforceability.

Another change that would soften the impact of the proposed rule change would be to do away with the provision that would render linked patents invalid (unenforceable) even in the case where a statutory disclaimer is filed after a claim is challenged as anticipated or obvious, even when no ruling had been made on such a challenge by a court or the USPTO. Patentees should not be penalized from disclaiming patents (or parts of them) that are found after issuance to be overbroad. The proposed rules would incentivize patentees to drag out invalidity fights even involving unimportant claims, given the potentially grave consequences of disclaiming a claim (or a patent) the validity of which has already been challenged.

Another possible approach, and one presumably within the USPTO’s rulemaking power, would be to decrease fees and allow challenges of multiple patents in a single proceeding, such as a reexamination or inter partes review.

To be clear, we are not advocating for any of these alternative approaches, some of which also appear to be beyond the USPTO’s rulemaking authority. Instead, our recommendation would be to make no changes to the current terminal disclaimer rules and procedures.

Sincerely yours,

The Intellectual Property Law Firm of Renner Otto