USPTO Withdraws Proposed Changes to Terminal Disclaimer Practice

Further to our article of May 13, 2024 (here), the U.S. Patent and Trademark Office (USPTO) announced on December 4, 2024, that it is withdrawing the Notice of Proposed Rulemaking published in the Federal Register on May 10, 2024. According to the USPTO, "In light of resource constraints, the USPTO has decided not to move forward with the proposed rule at this time and to withdraw the proposed rule.  Despite the decision not to move forward with the proposed rule at this time, the USPTO appreciates and takes seriously the thoughtful perspectives raised by commenters." 

Recall that the proposed rule sought to require that a Terminal Disclaimer include a provision stipulating that the patent will be unenforceable if it is linked directly or indirectly to another patent whose claims have been invalidated due to prior art. This raised valid concerns that filing a Terminal Disclaimer would entail a risk that the enforceability of an entire patent could depend on the validity of a single claim in another patent. 

Many patent applicants and owners will welcome the withdrawal of this proposed rule.  At least for now, current practice remains, where claims are typically assessed individually even within a single patent. 

The USPTO’s announcement is available here:  Federal Register