Terminal Disclaimers, Continuations, and the False Thicket Narrative *

Terminal Disclaimers, Continuations, and the False Thicket Narrative *

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Erroneous attempts to blame patents for high drug prices is continuing unabated, with the Administration and courts making it harder to obtain and keep sufficient patent protection for even life-saving, breakthrough drugs. Witness the U.S. Patent and Trademark Office (USPTO) Notice of Proposed Rulemaking (NPRM) from May 10, 2024 (89 Fed. Reg. 40439), that would dramatically alter patent applicant and patentee statutory rights in their patent filings by proposing a change to the requirements for submission of a terminal disclaimer (TD). In summary, the proposed rule would require that every TD include a provision agreeing that the patent with the TD is unenforceable if at least one claim of the underlying patent has been finally held unpatentable or invalid under Sections 102 or 103. The USPTO is also preparing to dramatically increase the fee for filing a terminal disclaimer, and despite being under an injunction prohibiting any attempt to curtail continuation practice, the USPTO is poised to similarly and dramatically increase the fees associated with filing a continuation. Meanwhile, courts more aggressively using prosecution laches to find patents unenforceable if prosecution lasts longer than six (6) years. What can the industry do to prepare for these changes? Will the rules and fees be challenged in court? Why does the false patent thicket narrative continue to have traction and influence government policy and action?

Materials

• Apple Scores Win at CAFC in Split Ruling on Prosecution Laches
• Does Hyatt v. Hirshfeld Mean That More than One-Third of Patents on the Top Pharmaceuticals are Presumed Invalid?
• FTC Backs USPTO Terminal Disclaimer NPRM as Others Warn it Exceeds Agency Authority
• USPTO Proposes Controversial New Rule on Terminal Disclaimer Practice

Survey

https://www.surveymonkey.com/r/Terminal-Disclaimers-Continuations-and-the-False-Thicket-Narrative