“Double patenting has all the time been suspect since there isn’t any statutory authority for the doctrine within the first place. Now, the USPTO proposes to increase a doctrine that already lacks any foundation within the legislation to particularly, deliberately, and unambiguously make it simpler and cheaper to problem patents tied collectively by terminal disclaimers.” – Gene Quinn
The U.S. Patent and Trademark Workplace (USPTO) will formally publish a Notice of Proposed Rulemaking (NPRM) tomorrow that might change terminal disclaimer apply associated to “non-statutory double patenting.”
The judicially-created doctrine of “obviousness-type double patenting”(ODP) has develop into codified by the USPTO such that the Workplace will reject claims to a couple of patent that modify in solely minor methods from each other until there’s a promise by the patentee “to not lengthen the patent exclusivity time period or enable a number of events to harass an alleged infringer.” That is executed through a “terminal disclaimer.”
In line with as we speak’s NPRM: “Even with the protections presently offered by a terminal disclaimer, a number of patents tied by terminal disclaimers which can be directed to apparent variants of an invention might deter competitors as a result of prohibitive value of difficult every patent individually in litigation or administrative proceedings.”
For that reason, the USPTO proposes to require {that a} terminal disclaimer should embody an “extra settlement that the patent with the terminal disclaimer won’t be enforced if any declare of the second patent is invalidated by prior artwork.”
This could be sure that when resolving a dispute the place there are a number of patents tied by terminal disclaimers, opponents might deal with the validity of the claims of a single patent, stated the NPRM.
In line with the Workplace, the intention of the NPRM is to “promote competitors by decreasing the price of difficult teams of patents tied by terminal disclaimers, leading to decreased limitations to market entry and decrease prices for shoppers.”
Julie Burke of IPQualityPro LLC posted a link to the NPRM on her LinkedIn web page and commenters there have been vital. Alan Burnett of Compass IP Legislation referred to as the proposal “an unimaginable overreach by the Director and the USPTO.” He continued:
“This implies you possibly can knock out a complete household (or no less than a number of members) with a single IPR with technically incompetent APJs. It is vitally frequent to make use of [terminal disclaimers] in continuations. That is WRONG, WRONG, WRONG!”
Burke additionally instructed IPWatchdog through electronic mail that that is “a pincer transfer” from the USPTO, which has now attacked inventors “on either side – first with vital proposed price will increase that might lure candidates into submitting terminal disclaimers early in prosecution. Second, the Might 10, 2024 proposed rule modifications, if adopted, would then penalize candidates whose patent portfolios are tied collectively by terminal disclaimers. Coupled with steep proposed price hikes for extra claims, continuations, and requests for continued examination, the writing is on the partitions. America’s Innovation Company is once more making an attempt to impose the Claims and Continuations Bundle on the IP group.”
IPWatchdog Founder and CEO Gene Quinn referred to as the NPRM “outrageously silly”. He defined:
“What meaning is the USPTO won’t deal with claims as independently patentable. If one declare from one patent turns into invalidated you then lose each different declare? What occurred to validity being judged declare by declare, which is definitely what the legislation requires.
Double patenting has all the time been suspect since there isn’t any statutory authority for the doctrine within the first place. Now the USPTO proposes to increase a doctrine that already lacks any foundation within the legislation to particularly, deliberately, and unambiguously make it simpler and cheaper to problem patents tied collectively by terminal disclaimers.
The one advantage of this ridiculous proposal is that it deviates a lot from patent legislation norms that it’s going to create such outrage that your complete extra-statutory doctrine of double patenting can be challenged, and will fall.”
Feedback can be due 60 days from publication tomorrow and will be submitted by coming into docket quantity PTO-P-2024-0003 through the Federal eRulemaking Portal at www.regulations.gov.
Picture Supply: Deposit PHotos
Writer: artursz
Picture ID: 208836060
