Is it Time to Eliminate Terminal Disclaimers?

I’m trying an open authorship model for a new short paper asking the question:

Is it Time to Eliminate Terminal Disclaimers?

I just wrote 150 words, and so it is 3% of the way toward a 5,000 word goal.  If we get to 5,000 coherent words, then I’ll make sure it gets published — probably in some fancy law journal.

  • Link to the Document for Editing:
  • If you add enough to be listed as a co-author, please add your name and contact info to FN 1.  (Anonymous contributions are also permitted).




16 thoughts on “Is it Time to Eliminate Terminal Disclaimers?

  1. 7

    And what would that do with all of the existing terminal disclaimers? Make them suddenly null-and-void? No, this won’t work in practice.

  2. 6

    It’ll turn out funnier if everyone adds just one sentence.

  3. 5

    Dear Dennis —

    Terminal Disclaimers still have an essential function — guaranteeing co-ownership. Imagine the mischief if two nearly-identical patents become owned by two different owners.

    1. 5.1


    2. 5.3


    3. 5.4


      Better to get rid of 5 or 6 of the off-the-eligibility-rails, innovation-killing CAFC judges.

      Far better.

    4. 5.5

      1) This happens when there is a restriction requirement and the second app is properly filed as a DIV

      2) If the two patents have the same term, you are describing something other than a terminal disclaimer.

    5. 5.6

      David is of course correct, but instead of TDs, it should probably be the other way around, the default is a TD situation, and if you actually want to try for it not being a TD situation, then we can bother with TD’s or something like them. Could be vastly simplified in the modern age.

  4. 4

    Is the assumption here that terminal disclaimers have no function because it is no longer possible to have different patent terms [or effectively extend patent protection] where two patent applications have 103 indistinguishable claims? But what about different patent terms due to different prosecutions, one getting extensive PTO or FDA delay statutory patent term extensions? Also, what about the 102 provision “DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–
    (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. ” ?

  5. 3

    NB – patents subject to a TD are marked as such on the front page, I’d imagine the numbers you’re looking for could be quickly pulled from public databases.

  6. 2

    I’d say that the initial proposal would be eliminating TDs, but making them inherent in continuations. If the same inventive entity is filing two “unrelated” applications that are 102 or close 103’s of each other, they should be required to choose one or claim priority to each other.

    That raises it’s own concerns, though.

    Looking through your outline, it looks like there are a LOT of other issues that could be solved, too, like restrictions, which would require the Office to fix it’s “count” system which encourages examiners to break up difficult or long applications.

    1. 2.1

      Restriction practice is currently an unmitigated mess (of the Examiner “King” bureaucrat fiefdom variety).

    2. 2.2

      The even more serious problem with continuation applications is the PTO not treating them in the order of their original application filing date – their true pendency date.

  7. 1

    If we eliminated the Terminal Disclaimer, what excuse would Examiners have to make obviousness-type double patenting rejections?

    1. 1.1

      *What excuse requiring hardly any work would the managerial class have to give examiners errors to prove their need?*


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