Proposal to Thwart Rerun Patent Assertions

An inventor may obtain claims in a second U.S. patent that vary in only minor (patentably indistinct) ways from claims the same inventor obtained in a first patent. But the USPTO will typically reject the claims in the second application under the doctrine of “obviousness-type double patenting.” Inventors can overcome such rejections during prosecution to obtain the second patent (and many more thereafter if desired) by filing a terminal disclaimer. The language of the terminal disclaimer prevents the timewise extension of patent term through multiple filings and prevents the indistinct claims from being separately assigned. In this way, terminal disclaimers are designed to strike a balance between incentivizing innovation while providing more certainty and protection to the public.

Over the years, the terminal disclaimer has worked exactly as designed. However, the usual bad actors have driven the USPTO to propose its first change in decades.

The USPTO has issued a notice of proposed rulemaking (NPRM) to add a new requirement for terminal disclaimers filed to obviate (overcome) non-statutory double patenting (here).

Under the proposed rule, to overcome double patenting the patentee would need to additionally stipulate that the patent subject to the terminal disclaimer will be enforceable only if it is not tied and has never been tied (through one or more terminal disclaimers) to a patent in which any claim has been finally held unpatentable or invalid over prior art. In other words, if a patent of a patentably indistinct group of patents (linked by terminal disclaimer) falls, so too would the rest.

If one were designing a patent system from scratch, this would be a common-sense control to include as it makes no sense to invalidate one patent of a group of indistinct patents only to face the same indistinct claim and litigation expense over-and-over again. For example, defeating a claim to a certain camera system only to face an indistinct claim again where the word “camera” is replaced with “imaging device.” And yes, there are plenty of people out there filing such rerun lawsuits. While collateral estoppel may offer some protection to the public, that defense is an expensive and time consuming litigation adventure. And for whatever reason the USPTO is very reluctant to find estoppel (or to even apply their own in any kind of consistent or logical fashion).

As explained by the USPTO in its Notice, the proposed change is designed to streamline and expedite patent disputes, narrow validity issues, and provide greater certainty to the public.

I expect there will be a seismic eruption of pushback from patent owners on this proposal. It is also inevitable that there will be a countervailing legislative proposal released within weeks. Fur will fly in the meantime.