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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:
Action Date FR Cite
NPRM  05/10/2024  89 FR 40439   
NPRM Comment Period End  07/09/2024 
Final Action  12/00/2024 
Final Action Effective  02/00/2025 
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