by Dennis Crouch
I wanted to provide a quick update on potential misinformation that came out in a panel that I was part of at the IPO annual conference. One speaker noted that the USPTO terminal disclaimer rules were already in effect. That is not true. In May 2024, the agency released a notice of proposed rulemaking (NPRM) and has not yet indicated whether it will finalize the rules. Terminal disclaimers filed today are not bound by the potential rule that appears to be intended to apply only prospectively to new terminal disclaimers filed after the rule goes into effect. The disclaimer process is a formal written process, and the proposed rule would require new language to be included in terminal disclaimers filed to obviate nonstatutory double patenting. And seemingly, this new required language would only apply to terminal disclaimers filed after the rule becomes effective.
Although the proposed rule is not yet in effect, it may soon be finalized. And, once finalized would have a dramatic impact on terminal disclaimer and continuation practice in the U.S. Many of us believe that the rules – in their current form – are unlikely to be enforceable. However there is a key difference between requiring a party to sign a disclaimer, and the impact of such a disclaimer if signed.
At its core, the proposed rule would require terminal disclaimers to include an agreement that the disclaimed patent would be unenforceable if it is tied directly or indirectly to another patent that has any claim invalidated or canceled based on prior art (under 35 U.S.C. 102 or 103). This new enforceability requirement would be in addition to the existing provisions that require a terminal disclaimer to match the expiration date of the disclaimed patent to the referenced patent and promise enforcement only during common ownership.
For patent applicants, the proposed changes present some challenging decisions. Filing a terminal disclaimer with the new requirements means accepting the risk that an entire patent’s enforceability could hinge on the strength of a single claim in another patent. This might lead applicants to more aggressively argue against double patenting rejections or pursue alternative claim amendments rather than simply filing a disclaimer. In addition, I expect a more active disclaimer practice where patentee’s file disclaimers in situations where their patent is likely to be invalidated.
In the realm of patent litigation, the proposed rule could significantly shift the balance of power in favor of patent challengers. Under the new system, defendants in patent infringement cases might focus their invalidity arguments on a single patent within a terminally disclaimed family, aiming to topple multiple patents simultaneously.
Among the 350+ comments received by the USPTO on the issue, the PTAB Bar Association letter does an excellent job of laying out the issues. The Association argues that the proposed rule exceeds the USPTO’s rulemaking authority, contradicts existing statutes and Federal Circuit precedent, and would have far-reaching negative consequences for patent practice. They contend the rule would likely increase the number of ex parte appeals to the PTAB, potentially reversing progress made in reducing the appeals backlog. The Association also believes the rule would create unintended consequences in AIA trials, allowing petitioners to circumvent estoppel provisions and time bars. Furthermore, they argue the rule would disproportionately impact small entities and could stifle innovation by making patent protection more costly and risky. The Association questions the USPTO’s economic impact analysis, suggesting it significantly underestimates the number of applicants who would avoid filing terminal disclaimers under the new rule.
I just want to say that it is unfathomably based that the AFCP 2.0 will be going the way of the dino. It’s a great idea, but implementing it via a separate form and all whatnot is not the way. It needed to be just an internal optional procedure to be worked out between an examiner and SPE, just for cases that were maybe right on the edge of being allowable. With the applicant being allowed to SUGGEST it, with very specific specified rationales set forth for them to use (not just generic statements). This procedure should not be dependent on the applicant filing a request, and should not be dependent on sending out more forms/reading more forms (just more paperwork, which sounds like not a big deal till the computer system is half on the fritz and just that one paper causes problems).
In a world with Communist China and others are breathing down America’s and the Free World’s neck, who could have imagined that PTO leadership would actually put forward innovation-crippling changes including these abhorrent, off-the-rails, no-authority TD changes.
Would the Senate have confirmed Vidal had they had even an inkling of what she would do — and try to do?
@Dennis, I’m very surprised that someone on the panel would make such a mistake like that and state those rules were already in effect. I’m inclined to think this person may have heard inside information that it will be enacted very soon and jumped the gun. Do you know if it was just a simple mistake or if my theory may have merit? I had assumed after Loper Bright the USPTO would have tabled those rules for now.
No, it sounded like the speaker just had a misunderstanding of the rule. He was talking about how it currently affected people’s practices.
Thanks, Kevin. The speakers at IPO are highly credentialed, I was wondering how someone could have been so uninformed. My firm did a thorough evaluation of the proposed rules and let’s just say that, we concluded it is very unlikely those rules would be ultimately upheld, especially considering the current composition of the Supreme Court. Is Vidal that reckless? I don’t think so.
It is also hard for me to imagine that a final rule would issue without substantial change from the proposal.
Has anyone simply emailed or called the PTO Director* to ask the current status of the proposed rule change for terminal disclaimers? [In particular, the proposed unprecidented required agreement that the disclaimed patent would be unenforceable if it is tied directly or indirectly to another patent that has any claim invalidated or canceled based on prior art.]
*I have successfully done that with two prior PTO Directors, on prior PTO subjects.
Yes. They are still considering …
is this ill-conceived rule really moving forward? Can the USPTO just spring this on us or will there at least be some type of “heads up”? Does the USPTO really want the embarrassment it had when the claims and continuations rule was held invalid by the Fed Circuit?
Great post. USPTO is trying to penalize inventors for their own delays in examination. By law we are entitled to a full term for all of our claims. This includes claims that are obvious variations of another. It wouldn’t be equitable to allow someone to produce an obvious variation of a claim during the period where USPTO improperly refused to grant a patent.
I looked back at the FR notice about the proposed rule, and there is very little there about statutory authority to impose the rule. There is a conclusory statement that the rule involves only rules of agency practice and procedure and thus does not require notice and comment. I see no assertion in the FR notice that there is any other statutory authority for this rule. I do not understand the USPTO’s authority to require this agreement from patent applicants as a condition for granting a patent.
Thanks!
Yes, I heard that comment and looked up a recent TD. No language of the new rule in there.
This is a non sequitur comment. Judge Newman’s extensive cognitive tests showed she was competent to act as a judge. Looks like a case of age discrimination by the judges on the CAFC. See “Above the Law” Huge Development In Pauline Newman’s Case: The Test Results Are In!
Gonna have to side with the doctor on this one By Chris Williams
on September 24, 2024 at 4:46 PM. Link below:
link to abovethelaw.com
Lets hope that new test is effective. But lets not forget that “Federal Circuit Judge Pauline Newman’s refusal to take medical tests as part of an investigation into her health led to her suspension from hearing cases. The suspension was extended for another year in September 2024.” That is, if she had not refused to take any such tests to begin with, even at her very advanced age, this suspension might not have ever occured.
In order to prevent unequal enforcement of the law, all the judges on the CAFC should have faced the same cognitive tests as Judge Newman on a regular basis if that is a job requirement. Picking out Judge Newman based on her age alone is prima facia age discrimination and violation of civil rights law. Judge Newman needs to file a Bivens cause of action against the individual judges on the CAFC who suspended her and file judicial ethics complaints for apparent bias in violation of the code of judicial conduct….in my opinion.
“based on her age alone”
Who told you that? It was based on her behavior and odd accusations she leveled at a staffer. That’s being generous.
I read prior posts and the accusations were not much more than gossip that did not rise to the level of probable cause. The Equal Protection Clause requires equal protection and not unequal enforcement of cognitive tests on Newman alone. See US Constitution.
What is good for the goose is good for the gander. All the judges on the CAFC should have full physicals, cognitive tests, drug tests, background checks, IRS audits, etc. just like the witch hunt Judge Newman was put through.
Big +1.
“I read prior posts and the accusations were not much more than gossip that did not rise to the level of probable cause. ”
Gossip lol. Pretty sure they were entered as evidence and she didn’t even move to have them removed/not considered as evidence (much less succeed).
She literally hasn’t even tried your approach. For good reason.
“The Equal Protection Clause requires equal protection and not unequal enforcement of cognitive tests on Newman alone. ”
I disagree with that, as it was a judicial on judicial action taken internally, but even if so, probably the rest of the court would be fine with doing so np. The results are kept confidential anyway so what would be the point?
“gossip”
Good grief, the ability of people to delude themselves is bottomless. You think Newman was given a time out because of “gossip”? What other nonsense do you believe that you’d like to share with all of us? Maybe you have some info about the secret weather control experiments the government is conducting off the coast of Florida.
“After reviewing Judge Newman’s entire medical file”
Lelz. Did he bother to evaluate her at all?
Yes, seems unlikely.
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