The U.S. Patent and Trademark Office ("USPTO") has withdrawn its proposed rule regarding terminal disclaimer requirements.
On December 4, 2024, the USPTO issued a notice that it has withdrawn its proposed rule relating to terminal disclaimer requirements set forth in the Notice of Proposed Rulemaking published in the Federal Register on May 10, 2024 (89 Fed. Reg. 40439). Under the now-withdrawn rule, terminal disclaimers would have included an agreement that the subject patent or a patent issuing from the subject application would be "enforceable only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: (1) any claim has been finally held unpatentable or invalid under 35 U.S.C. 102 or 103 … by a Federal court in a civil action or by the USPTO, and all appeal rights have been exhausted; or (2) a statutory disclaimer of a claim is filed after any challenge based on 35 U.S.C. 102 or 103 to that claim has been made." 89 Fed. Reg. at 40449. The USPTO professed to withdraw its proposed rule in light of resource constraints. 89 FR 96152.
The USPTO reported that it received more than 300 comments regarding the May 10, 2024, Notice of Proposed Rulemaking from various stakeholders during the 60-day comment period. Id.
