RULE SHIFTING---New rule change solves backlogs.

The United States Patent and Trademark Office (USPTO) recently proposed a significant change to the rules governing terminal disclaimers. The USPTO says that the rule change would “promote innovation and competition,” but is more likely designed to reduce the backlog of cases at the USPTO regardless of the cost to innovators, who will end up with weaker patents if they result from continuation applications with terminal disclaimers.

Competitors of patentees will sometimes utilize the teaching of a patent but, to avoid infringement, design around the claims of the patent. Patentees often file patent applications based on an original patent (called “continuation practice”) to cover products designed in this manner. Continuation applications are sometimes rejected on the basis of “double patenting,” particularly if the patent office sees the continuation application as merely an attempt to extend the term of the original patent. Terminal disclaimers, which limit the patent term to the expiration date of the original patent, are frequently employed in response to such double patenting rejections.

The USPTO's proposed rule change would introduce a new condition on continuation applications with terminal disclaimers: the applicant filing a terminal disclaimer would have to agree that the patent with the terminal disclaimer will only be enforceable if it is not, 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. This proposed new requirement is inconsistent with 35 USC 253, which states that the invalidity of one claim in a patent shall not render the remaining claims in the patent invalid. Nonetheless, the proposed rule would require patent applicants agree to a self-imposed penalty similar to that barred by statute.