Proposed Changes to Terminal Disclaimer Practice: Strategic Considerations for Patent Portfolios
At Renner Otto, we continually monitor regulatory changes that could impact intellectual property strategies. A recent notice from the United States Patent and Trademark Office (USPTO) proposes significant amendments to terminal disclaimer practices that may necessitate a shift in how patent portfolios are managed.
Understanding the Proposed Changes
The USPTO has issued a Notice of Proposed Rulemaking (NPRM) that introduces a new requirement for terminal disclaimers used to overcome nonstatutory double patenting. The rule aims to refine the balance between promoting innovation and preventing extended monopolies on patent rights through claims that are only slightly different across multiple patents.
Key aspects of the proposed rule include:
• Enforceability Conditions: A patent with a terminal disclaimer would only be enforceable if it is not, and has never been, linked through terminal disclaimers to any patent where a claim has been invalidated or deemed unpatentable. This condition is designed to reduce litigation costs by making it easier to challenge entire groups of patents if one is found invalid.
• Impact on Patent Litigation: By simplifying the process of challenging patents that are closely related, the rule aims to change the balance in patent disputes, by making it easier to invalidate patents and aid patentees’ competitors' entry into the market.
Implications for Patent Strategy
Traditionally, the filing of terminal disclaimers has been a straightforward strategy to bypass double patenting issues, with the primary downside being a potential reduction in the patent term. However, under the new proposal, the implications of filing a terminal disclaimer are more substantial, as it could lead to a situation where related patents in a portfolio could become unenforceable simultaneously if one is invalidated.
Revised Strategic Advice
Given these proposed changes, an entity may consider a cautious approach to the use of terminal disclaimers:
1. Thorough Claim Analysis: Before opting for a terminal disclaimer, consider a robust comparison of the claims in the current application against those in cited applications or patents. Highlighting substantial differences may avoid the need for a terminal disclaimer altogether.
2. Portfolio Management: Reevaluate the patent / application portfolio to identify potential vulnerabilities introduced by these proposed changes. It may be prudent to diversify a portfolio to mitigate risks associated with linked patents.
3. Engage in USPTO Dialogue: Participate in the commentary process for the NPRM. This is an opportunity to influence how these rules are finalized, ensuring they consider practical impacts on patent holders.
Next Steps
Renner Otto is actively participating in discussions surrounding these changes and is prepared to assist you in crafting a tailored strategy that aligns with the new regulatory environment. We will continue to keep you updated on developments and provide detailed analyses to support your decision-making process.
We advise scheduling a consultation with our patent strategy team to discuss how these proposed changes might specifically affect your business and to plan appropriate actions.
At Renner Otto, the oldest intellectual property firm in Cleveland, we specialize in assisting our clients as they develop efficient Intellectual Property strategies that are tailored to their business’s needs. This includes our client’s need to police and enforce their intellectual property rights.
Our attorneys are knowledgeable on a wide range of domestic and international IP issues, and we partner with Firms around the world to better serve our clients. Someone from the Renner Otto team would be happy to discuss this topic or any related Intellectual Property matters. Contact us for a complimentary consultation to see how we can help your business move your innovation forward.
The attorneys at Renner Otto strive to be authorities in all matters concerning the ever-evolving landscape of Intellectual Property; however, the information provided on our website is not intended to be legal advice, nor does it create an attorney-client relationship.