Former USPTO Officials Urge Vidal to Immediately Withdraw NPRM on Terminal Disclaimers

“[T]he former USPTO officials note that rendering patents unenforceable in this way is ‘a dramatic (and possibly illegal) departure from the normal process of considering each patent claim on its own merits.’”

terminal disclaimersOn May 28, a group of five former Directors, Deputy Directors and Patent Commissioners at the U.S. Patent and Trademark Office (USPTO) sent a letter addressed to current USPTO Director Kathi Vidal in opposition to a rule package on terminal disclaimer practice proposed earlier this month. This group of highly-ranking former government officials join a growing chorus of voices who are concerned by the apparent overreach of the nation’s patent granting agency into substantive rulemaking that would create enforceability issues for companies making use of terminal disclaimers to obtain patent rights.

NPRM on Terminal Disclaimers in Continuation Practice Creates Instant Controversy

In early May, the USPTO issued a notice of proposed rulemaking (NPRM) in the Federal Register that would add a new requirement to terminal disclaimers filed to overcome patent examiner rejections for nonstatutory double patenting. The proposed rule would require patent applicants to agree to hold unenforceable any patent that is tied by terminal disclaimer to another patent having claims invalidated either at the agency or in federal court. The agency’s NPRM indicated that the proposed rules are meant to prevent multiple patents that are obvious variants of each other from potentially deterring competition.

Almost immediately after the USPTO published the NPRM in the Federal Register, several industry insiders sounded alarms over the likely negative impacts of the proposed rule. IPWatchdog Founder and CEO Gene Quinn called the NPRM “outrageously stupid,” noting that the law requires that patent validity be assessed claim by claim and that the judicially-created doctrine of double patenting lacks a proper basis in U.S. patent law. Commentary from Sherry Knowles, Principal at Knowles Intellectual Property Strategies, pointed out that the USPTO’s proposed new requirement on terminal disclaimers exceeds both case law cited by the USPTO in support of its proposed rule as well as the agency’s statutory rulemaking authority, which allows the USPTO to issue procedural rules but not rules affecting substantive patent rights.

The former USPTO officials opining on the agency’s proposed rule note the unusual nature of their letter, but voice many similar concerns regarding not only the agency’s overreach of its statutory authority but also the perverse incentives the rule creates to impact the innovation economy in negative ways. The undersigned officials calling for Director Vidal to immediately withdraw the NPRM include Former USPTO Directors Andrei Iancu and David Kappos, Former USPTO Deputy Directors Laura Peter and Russell Slifer, and Former Commissioner for Patents Drew Hirshfeld.

Under the proposed rule, a validity determination that cancels claims in one patent clearly impacts the scope of patent rights in a separate patent application tied via terminal disclaimer. As a result, the former USPTO officials contend that the NPRM will likely be challenged as a substantive rule outside of the agency’s procedural rulemaking authority. Like other critics of the NPRM on terminal disclaimer practice, the former USPTO officials note that rendering patents unenforceable in this way is “a dramatic (and possibly illegal) departure from the normal process of considering each patent claim on its own merits.”

New Rules and Increased RCE Fees Constitute Agency Action to Limit Continuation Patents

By reducing the use of terminal disclaimers filed to overcome examiner rejections, the former USPTO officials argue that the proposed rule will significantly increase the cost of obtaining patents for independent inventors and other under-resourced innovators. Worse, the proposed rule is likely to incentivize parties infringing on continuation patents, which are often issued under terminal disclaimers by the patentee, to challenge claims in other patents tied by terminal disclaimer as a shortcut to avoiding infringement liability on otherwise meritorious patent claims.

Despite the USPTO’s concerns about promoting competition, the former USPTO officials opposing the terminal disclaimer rules note that the agency has made no showing that terminal disclaimers and continuation practice are harming the American economy. The former officials are particularly troubled by the agency’s decision to promulgate such rules without conducting thorough studies that would inform the public of their impact on continuation practice. The officials acknowledged that the NPRM has an immediate effect on filing practices even while the agency solicits feedback from stakeholders on the proposed terminal disclaimer rules.

Although inventors are afforded the right to pursue continuation patents by statute, the former USPTO officials argue that the NPRM, along with recent fee setting proposals that would increase the cost of requests for continued examination by 700% in some cases, constitutes agency action to significantly deter continuation patents. Such agency attempts to limit continuation practice has been successfully challenged in the past. While the letter from former USPTO officials doesn’t discuss the agency’s controversial decision back in 2007 to propose rules limiting continuation patents, other commentators have pointed out that the USPTO remains under a permanent injunction regarding rules impacting continuation practice.

At a time when the United States needs to maintain its technological dominance against foreign rivals in critical tech sectors like 5G/6G communications, quantum computing and artificial intelligence, the nation’s patent granting agency should not adopt terminal disclaimer rules that would increase uncertainty for patent owners, the former USPTO officials conclude.


Image Source: Deposit Photos
Author: j.dudzinski
Image ID: 124935998 


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Join the Discussion

7 comments so far. Add my comment.

  • [Avatar for HAJ]
    June 8, 2024 07:15 am

    Director Vidal’s decision to remand the question of RPI status between Google and Samsung in Netlist 912 patent review shows what a coward she is (should have made the decision herself) and shows how corrupt the patent review board is. Only claim 16 challenged and Google who works closely with Samsung on everything smartphone related is a beneficiary and there is no RPI status? Give me a break! The p tab is bought and paid for and should be dissolved completely. That will get rid of director Vidal and the other corrupt p-tab judges. Hopefully they end up in front of SCOTUS again and the Supreme Court will finally give them the ax!

  • [Avatar for Ted mena]
    Ted mena
    June 4, 2024 09:50 am

    It’s just sickening how obvious it is that Vidal is simply the big tech puppet she appears to be. I’m genuinely concerned for this countries future concerning innovation. Shameful.

  • [Avatar for dave edwards]
    dave edwards
    June 4, 2024 06:36 am

    It is very obvious to see that the PTAB are paid to invalidate patents for large corporations. They even invalidated one that they themselves had validated before.

  • [Avatar for Michael Bland]
    Michael Bland
    June 4, 2024 01:34 am

    Kathi Vidal must go! She is a real live thorn in the flesh of every small innovative inventor in the U.S. Our patent system which was once the envy of the world is now more than broken. What a joke the America Invents Act has been from the start and it’s only getting worse.

  • [Avatar for Yenrab]
    May 31, 2024 10:12 am

    So why don’t we do everything possible to get rid of the judicial and non-statutory obviousness-type double patenting? Write you congessman (-woman)! Terminating Director Vidal is something practicioners don’t have any real power to carry out.

  • [Avatar for Unhappy Female Inventor]
    Unhappy Female Inventor
    May 30, 2024 11:45 am

    What possible reason would Director Vidal have for even suggesting this other than perhaps being in bed with Big Tech?

    It is so obvious this would really hurt the small inventor and help Big Tech.

    Let’s see what she does next.

  • [Avatar for Pro Say]
    Pro Say
    May 29, 2024 09:04 pm

    The one and only way to prevent Vidal’s continued efforts to block, weaken, cost-raise, and eliminate innovation-protecting patents is to get her the h.e.l.l. out of the Patent Office.

    She is unfit to hold the leadership position of such an important lever of the American economy.

    Congress: Since she likes “firsts” so much, let her be the first Patent Office director to be removed from office. Now that’s one first all stakeholders except Big Tech can rally behind.

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