News & Analysis as of

Proposed Rules Terminal Disclaimer Double Patent

Morris, Manning & Martin, LLP

USPTO Abandons Double Patenting Rule: A Victory for Continuation Strategy

The United States Patent and Trademark Office (USPTO) has withdrawn its controversial proposal to amend the rules on terminal disclaimers and double patenting. This decision marks a significant triumph for advocates of...more

McDermott Will & Emery

PTO Withdraws Proposed Rule on Terminal Disclaimer Changes

McDermott Will & Emery on

The US Patent & Trademark Office (PTO) withdrew its proposed rule that suggested major changes to its terminal disclaimer practice. 89 Fed. Reg. 96152 (Dec. 4, 2024)....more

Troutman Pepper Locke

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

Troutman Pepper Locke 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

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

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

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

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