I have written in the past about terminal disclaimers (TDs) under US law (e.g. here and here). Briefly, a TD promises that (a) the term of the patent that issues from the subject application will not extend time-wise beyond the term of an earlier patent that is specified in the TD; and (b) both patent need to be co-owned in order for the later-issued patent to be enforceable.
TDs arose at a time when US patents were issued for 17 years from the grant date, and there was no publication of applications prior to grant. In cases in which later-pending claims were deemed to be obvious over the granted claims of an inventor’s earlier-issued patent (for example, the inventor took the narrow claims than an examiner was willing to grant, then filed a continuation in order to argue further about broader claims to which the inventor felt he was entitled), where the earlier patent was not available as prior art against the later application (most commonly when the later application was a continuation of the earlier patent), TDs provided an elegant solution for the PTO and the inventor: by limiting the term of the later-issued patent, TDs preclude the inventor from gaming the system to obtain effectively a longer patent term than that to which he was entitled (since the later-issuing patent, the claims of which in principle could have been included in the earlier patent, would in the absence of a TD expire later than the claims of the earlier-issued patent); and by requiring co-ownership for enforceability, third parties wishing to license the patents or challenge their validity would only have to deal with patent owner.
Even after the US switched to a 20-years-from-earliest-filing regime in the 1990’s, thus in most cases obviating the need to the “terminal” part of the TD, the co-ownership requirement remained. TDs thus are still in use any time an examiner makes an “obviousness-type double-patent” rejecting between an applicant’s pending application and applicant’s patent or additional pending application.
There’s one catch to a TD: the PTO has to approve it. Ostensibly, that’s just a ministerial act, and in some cases, via the PTO’s electronic filing system, one can submit a TD that is automatically granted, without human intervention. Of course, that route involves providing the PTO with the magic words it wants to see in a TD.
Last spring, the USPTO proposed new rules regarding terminal disclaimer practice. These would have increased the cost for filing a TD, but more importantly they would have made the grant of a TD conditional upon agreeing to more than just a limitation of the term of the patent and co-ownership as a requisite for enforceability. The proposed rules would have made the applicant promise that if a claim in one of the TD-related patents was invalidated, then the claims in the other patent would also be invalid.
The PTO received about 350 comments. I have not read all of them, but in my view there cannot be more a more damning comment letter one than this one, and not just because I agree with all the points raised therein. This comment letter was signed by two of current Director Vidal’s predecessors (Andre Iancu and David Kappos), as well someone who was Acting Director (Drew Hirschfeld), and two former Deputy Directors of the PTO (Laura Peter and Russell Slifer). I reproduce the substantive portions here, which speak for themselves.
“We take the unusual step of sending you this letter because we are deeply concerned with the substance and process surrounding the USPTO's recent promulgation of a rules package regarding continuations and terminal disclaimers (89 FR 40439). We call on your Office to withdraw it immediately. These proposed rules provide perverse incentives and threaten serious harm to America's innovation economy. They are contrary to law, and it will be argued that they exceed the Office's rulemaking authority.
“We are particularly troubled that the Office promulgated rules of such consequence without conducting thorough studies that the public could evaluate regarding the proposed changes' alleged desirability and potential impact. The proposed rules run counter to decades of patent practice, undermining long- settled expectations. While we recognize that the USPTO has shown a genuine interest in receiving public feedback, the NPRM is having an immediate impact while pending. Patents convey property rights upon which inventors, investors, companies, and the public make important long-term decisions. They are financial instruments at the core of the innovation economy, enabling investment, trade, and collaboration. Radical changes in the patent system should be undertaken only after careful analysis of need, consequence, and public input.
“The proposed rules package contradicts these fundamental principles of a stable and robust patent system. Some of our concerns include:
“* Because the proposal clearly impacts the scope of patent rights in one application based on validity determinations in another, it will be argued that it constitutes a "substantive" rule, which is outside of the Office's statutory authority and, therefore, illegal.
“* The proposal will increase the number of challenges to double patenting rejections and reduce the use of terminal disclaimers. This will, in turn, significantly increase the cost of obtaining patents and the hurdles in enforcing patents. This will disproportionately impact independent inventors, start-ups and small businesses, and other under-resourced innovators.
“* The proposed rules render unenforceable entire patents if a single claim in a different patent is found to be invalid. This is a dramatic (and arguably illegal) departure from the normal process of considering each patent claim on its own merits.
“* This proposal hands a powerful cudgel to infringers, who will attack an inventor's rights where there is a continuation patent by taking advantage of the shortcut these proposed rules would create. Infringers would be able to render strong, meritorious patent claims unenforceable without challenging those claims on their own merits.
“* The proposal seeks to solve a problem that does not exist. At a minimum, the USPTO has made no showing that the terminal disclaimer and continuations practice is harming the American economy or that the new rules would improve matters if adopted.
“Combined with another recent proposal to increase fees for continuations and terminal disclaimers, some over 700%, the Office is evidently attempting to significantly deter, if not eliminate, continuations practice – a right that inventors are given by statute. It is not for the USPTO, an administrative agency with no substantive rulemaking authority, to make such an important decision for the United States on its own.
“At a time when America is losing its technological edge to China and other nations and needs to maximize its creative output in order to compete in artificial intelligence, 5/6G, quantum, energy, biotechnology, and so much more, the USPTO’s NPRM destabilizes the patent system and advances anti- innovation policies. The terminal disclaimer and continuations proposal creates uncertainty every day that it remains under consideration, disrupting the innovation economy even if the rules are ultimately not adopted. The USPTO should withdraw this proposed rules package immediately and work to restore stability and predictability in the American patent system.”
Translation: Kathi, have you lost your mind? Not only are the proposed rules stupid and harmful, it’s not your place to make them, and the law doesn’t authorize you to make them.
Thankfully, today the PTO announced that it is withdrawing the proposed rules. Its stated reason is pithy: “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.” But it’s hard not to think that Director Kathi Vidal getting smacked down by her predecessors had something to do with it.
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