USPTO Withdraws Proposed Rulemaking on Terminal Disclaimers

The United States Patent and Trademark Office (USPTO) has officially decided to halt its proposed changes to terminal disclaimer practice, a decision set to be published in the Federal Register on December 4, 2024. This move has been met with relief by many in the patent community due to the significant alterations the rulemaking would have introduced.

Implications for the Patent Bar

The proposed rules would have fundamentally changed the dynamics of terminal disclaimer filing, potentially affecting how patent attorneys and agents manage patent portfolios. The decision not to proceed with these changes avoids a major shift in practice but leaves the industry pondering future adjustments.

Future Considerations

As we approach 2025, the withdrawal of this proposal doesn’t mean the end of the conversation around terminal disclaimers. The patent community should:

• Stay Informed: Keep abreast of any future proposals related to terminal disclaimer practices.
• Prepare for Potential Changes: Develop strategies now to mitigate the impact of similar regulations should they be reintroduced. This might include:
  • Portfolio Management: Reevaluating patent portfolios to ensure they are robust against potential changes in terminal disclaimer rules.
  • Claiming Strategy Adjustments: Considering how patent claims are structured to potentially avoid the need for terminal disclaimers or to prepare for new conditions these might entail.

Where to Find the Official Announcement

For those interested in reading the full details of the USPTO’s decision, the announcement can be accessed here:

https://public-inspection.federalregister.gov/2024-28263.pdf

 

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