AIPLA Comments on Terminal Disclaimer Practice to Obviate Nonstatutory Double Patenting

Arlington, VA. July 9, 2024 - The American Intellectual Property Law Association (AIPLA) submitted comments to the USPTO in response to their Notice of Proposed Rule Making on terminal disclaimer practice to obviate nonstatutory double patenting.

If adopted, the proposed Rule would require applicants who file a terminal disclaimer (“TD”) in response to an obviousness-type double patenting (“ODP”) rejection to aver that they would not enforce any claim in which such a TD was filed. Such averment would be required whether a claim was subject to an ODP rejection. AIPLA indicated that that the Office lacks statutory authority for promulgating such a substantive Rule. Further, AIPLA noted that the proposed lose-one-lose-all proposal would be inconsistent with the claim-by-claim validity analysis required under 35 U.S.C. §§253 and 282, would stifle patent incentives to innovation, and result in additional costs to both the Office and Applicants. AIPLA also noted that the proposal would further add to the application backlog because applicants would need to file additional continuing applications to capture and protect their inventions.

Please download the comments posted to the right of this page to view in full.