View Rule
View EO 12866 Meetings | Printer-Friendly Version Download RIN Data in XML |
DOC/PTO | RIN: 0651-AD76 | Publication ID: Fall 2024 |
Title: Terminal Disclaimer Practice to Obviate Nonstatutory Double Patenting | |
Abstract:
The USPTO amends the rules of practice to add a new requirement for an acceptable terminal disclaimer that is filed to obviate (that is, overcome) nonstatutory double patenting. The rule change would require terminal disclaimers filed to obviate nonstatutory double patenting to include an agreement by the disclaimant that the patent in which the terminal disclaimer is filed, or any patent granted on an application in which a terminal disclaimer is filed, will be enforceable only if the patent is not tied and has never been tied directly or indirectly to a patent by one or more terminal disclaimers filed to obviate nonstatutory double patenting in which: any claim has been finally held unpatentable or invalid as anticipated or obvious by a federal court in a civil action or by the USPTO, and all appeal rights have been exhausted; or a statutory disclaimer of a claim is filed after any challenge based on anticipation or obviousness to that claim has been made. This action is being taken to prevent obvious variants of an invention from potentially deterring competition and to promote innovation and competition by allowing a competitor to avoid enforcement of patents tied by one or more terminal disclaimers to another patent having a claim finally held unpatentable or invalid over prior art. |
|
Agency: Department of Commerce(DOC) | Priority: Substantive, Nonsignificant |
RIN Status: Previously published in the Unified Agenda | Agenda Stage of Rulemaking: Final Rule Stage |
Major: No | Unfunded Mandates: No |
CFR Citation: 37 CFR 1.321 | |
Legal Authority: 35 U.S.C. 2(b)(2) |
Legal Deadline:
None |
|||||||||||||||
Timetable:
|
Regulatory Flexibility Analysis Required: No | Government Levels Affected: None |
Small Entities Affected: No | Federalism: No |
Included in the Regulatory Plan: No | |
RIN Data Printed in the FR: No | |
Agency Contact: Raul Tamayo Senior Legal Advisor Department of Commerce Patent and Trademark Office P. O. Box 1450, Alexandria, VA 22313-1450 Phone:571 272-7728 Fax:571 273-7728 Email: raul.tamayo@uspto.gov |