Earlier this month, the USPTO issued a notice of proposed rulemaking (NPRM) to add a new requirement to terminal disclaimers to overcome nonstatutory double patenting rejections. Specifically, if the proposed rule were to be adopted, filing of a terminal disclaimer would obligate the applicant to agree that the patent would become unenforceable if any claim in any other patent linked by a terminal disclaimer were held to be invalid or unpatentable over the prior art. The rule would only apply to terminal disclaimers filed on or after the effective date of any final rule. Comments must be submitted by July 9, 2024, to ensure consideration.

If passed, the rule would potentially have some interesting consequences for clients with respect to their continuation practice because a continuation application would only be as enforceable as the weakest claim in the family.  Accused infringers could, for example, defend themselves against a patent infringement lawsuit by attempting to invalidate a broader claim in a related, but unasserted, patent.  Accordingly, broadening continuations could be riskier to pursue if there are plans to assert any of the patents in the patent family.

The net benefit of this rule appears to be in favor of accused patent infringers, to the detriment of patent applicants.  However, we have been advising our clients on how they could minimize the overall impact of this revised terminal disclaimer rule if it were to be implemented.