News & Analysis as of

Terminal Disclaimer Patents

Wolf, Greenfield & Sacks, P.C.

Allergan ‘First’ Exception to Cellect ODP Scenarios

In a highly anticipated decision in Allergan v. MSN Labs., the Federal Circuit held yesterday that claims in a first-filed, first-issued, later-expiring patent cannot be invalidated for double patenting by claims in a...more

Dickinson Wright

Terminal Disclaimer Rule Proposed to Balance Innovation and Competition

Dickinson Wright on

The United States Patent and Trademark Office (“USPTO”) periodically evaluates the delicate balance of the U.S. patent system to protect innovation without excessively stifling competition. U.S. patents give patent owners the...more

Fitch, Even, Tabin & Flannery LLP

IP Alert: Are Terminal Disclaimers Destined for Termination?

July 17, 2024 Applicant-submitted terminal disclaimers tie similar co-owned patents to a common expiration date and typically serve to ensure that a later-filed continuation application lives no longer than its parent. The...more

Goodwin

The USPTO Proposes a Radical Change to Terminal Disclaimer Practice: You Have an Opportunity to Comment

Goodwin on

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking that, if enacted, would tie the enforceability of every claim of a patent subject to a terminal disclaimer to the...more

Strafford

[Webinar] Obviousness-Type Double Patenting and USPTO Proposed Rules for Terminal Disclaimers - Recent Court Treatment,...

Strafford on

This CLE webinar will guide patent counsel on obviousness-type double patenting (ODP), including the recent decisions that have relied on Cellect. The panel will also discuss the USPTO's proposed terminal disclaimer rule and...more

Locke Lord LLP

Former USPTO Directors and Officials ‎Call for Withdrawal of USPTO Proposed Rule on Continuations ‎and Terminal Disclaimers (89 FR...

Locke Lord LLP on

In the Notice, the USPTO proposed adding a new requirement for acceptable terminal disclaimers to obviate nonstatutory double patenting. The stated goal for this rule change is “to promote competition by lowering the cost of...more

Miller Canfield

Strong Headwinds for the USPTO’s Terminal Disclaimer Proposal

Miller Canfield on

The United States Patent and Trademark Office (USPTO) is facing vigorous backlash to its proposal to change terminal disclaimer practice used in patent applications and, not so subtly, discourage the use of continuation...more

Akerman LLP

Unenforceable Upon Issuance: The Patent Danger Posed by Errors in a Terminal Disclaimer

Akerman LLP on

A recent case in the Western District of Oklahoma shines a spotlight on the patent danger posed by errors in a terminal disclaimer. In this case, a typographical error in the filed terminal disclaimer rendered an ensuing...more

McDonnell Boehnen Hulbert & Berghoff LLP

Former Directors Request Rescission of Proposed Rule Change

As discussed previously on this blog (see "USPTO Proposed Rule Change to Terminal Disclaimer Practice" and "The USPTO's Proposed Terminal Disclaimer Rule: A Litigator's Perspective") and elsewhere, the U.S. Patent and...more

McDermott Will & Emery

Patent Thicket Avoidance: PTO Proposes Changes to Terminal Disclaimer Practice

McDermott Will & Emery on

On May 10, 2024, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking (Notice) concerning major changes to the terminal disclaimer (TD) practice, which may lead to a sea change in patent prosecution...more

Womble Bond Dickinson

How Are The USPTO’s Proposed Rule Changes For Terminal Disclaimers Problematic?: Let Me Count The Ways

Womble Bond Dickinson on

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (Notice) proposing changes to terminal disclaimer (TD) practice....more

K&L Gates LLP

USPTO Considering Changes to Enforceability of Patents Subject to a Terminal Disclaimer

K&L Gates LLP on

On 10 May 2024, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking aimed at changing the current practices surrounding terminal disclaimers. The proposed change could have...more

Polsinelli

USPTO Proposes Rule Adding Conditions of Enforceability to Patents Tied to Terminal Disclaimers

Polsinelli on

On Friday, May 10, 2024, the USPTO issued a notice of proposed rulemaking in the Federal Register directed at amending the rules of practice to add a requirement for terminal disclaimers filed to overcome rejections for...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

United States Patent and Trademark Office Proposes Changes to Terminal Disclaimer Practice

On May 10, 2024, the United States Patent and Trademark Office (“USPTO”) published a notice of proposed rulemaking in the Federal Register that could dramatically impact prosecution practices, especially for those...more

Wilson Sonsini Goodrich & Rosati

USPTO Proposes New Requirement for Terminal Disclaimers That Amounts to a Significant Change from Current Practice

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking to add a new requirement for terminal disclaimers filed to obviate nonstatutory double patenting rejections to the...more

Morgan Lewis

USPTO Proposes New Rule on Terminal Disclaimers

Morgan Lewis on

The US Patent and Trademark Office (USPTO) recently proposed a new rule for filing terminal disclaimers to overcome obviousness-type double patenting rejections. If adopted, the rule will likely spur patent applicants to...more

Wolf, Greenfield & Sacks, P.C.

USPTO Proposed Terminal Disclaimer Can Terminate Patents

The USPTO on May 10, 2024, issued a notice of proposed rulemaking (NPRM) raising the requirements for accepting a Terminal Disclaimer (TD) to obviate obviousness-type double patenting (ODP). Specifically, the newly proposed...more

Axinn, Veltrop & Harkrider LLP

Notice of Proposed Rulemaking to Expand Reach of Terminal Disclaimers

On May 10, 2024, the USPTO posted a notice of proposed rulemaking (NPRM) soliciting comments regarding a proposed change concerning terminal disclaimers used to overcome non-statutory double patenting. The proposed change...more

WilmerHale

USPTO's Notice of Proposed Rulemaking on Terminal Disclaimer Practice

WilmerHale on

On May 10, 2024, the United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking (NPRM) that proposes a rule regarding new requirements for terminal disclaimers filed to obviate nonstatutory...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Proposed Rule Change to Terminal Disclaimer Practice

On May 10, 2024, the U.S. Patent and Trademark Office announced a proposed rule change to terminal disclaimer practice.Unfortunately, the proposed change appears to further weaken issued patents in which terminal disclaimers...more

MoFo Life Sciences

USPTO Considers Changing Terminal Disclaimer Practice To Require Agreement Regarding Enforceability

MoFo Life Sciences on

On May 10, 2024, the USPTO issued a Notice of Proposed Rulemaking that proposes major changes to terminal disclaimer practice that could greatly affect both patent prosecution and patent litigation strategies. Specifically,...more

Foley & Lardner LLP

USPTO Aims to Mow Down Patent Thickets

Foley & Lardner LLP on

In a stunning Federal Register Notice published May 10, 2024, the U.S. Patent and Trademark Office (USPTO) proposes to impose a new requirement on terminal disclaimers filed to overcome obviousness-type double patenting...more

McDonnell Boehnen Hulbert & Berghoff LLP

Rethinking In re Cellect and Its Consequences

The Federal Circuit's In re Cellect decision has caused a great deal of commentary and proposals to avoid its consequences, including changing prosecution strategies and filing prospective, precautionary terminal disclaimers...more

Knobbe Martens

A Terminal Disclaimer Is Not an Escape Hatch

Knobbe Martens on

IN RE CELLECT, LLC - Before Lourie, Dyk, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Obviousness-type double patenting analyses for patents with Patent Term Adjustments are based on the...more

Dunlap Bennett & Ludwig PLLC

The Role of Patents in Prescription Drugs

Americans spend on average about $1,300 per person per year on prescription drugs, which represents only about 13.3% of the total paid-for drugs in the US. Private insurers, Medicare, and Medicaid pay another 81.8%. ...more

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