In a recent piece featured on World IP Review, Keker, Van Nest & Peters attorneys Kristen Lovin and Niall Frizzell discuss a proposed rule by the U.S. Patent and Trademark Office (USPTO) that could significantly impact patent litigation, particularly in addressing patent thickets.
Lovin and Frizzell explain that the USPTO’s current terminal disclaimer practice allows patentees to avoid the bar on non-statutory double patenting by limiting the term of a later patent to that of its predecessor. While this provides patentees with greater flexibility and protection from abuses, it can cause patent defendants, particularly those with fewer resources, to have to navigate dense clusters of long or complex litigation.
In response to these concerns, the USPTO’s proposed rule expands the terminal disclaimer practice so that if a patent is invalidated for being anticipated or obvious in light of prior art, any subsequent patent tied to it through a terminal disclaimer would also become unenforceable.
Lovin and Frizzell discuss how this change can be a powerful tool for patent defendants and could reshape litigation strategies in several ways, including increasing use of inter partes reviews (IPR) and reexaminations, encouraging collaboration among defendants with proactive invalidity challenges, and changing incentives by reducing the risk of serial lawsuits.
The USPTO is still considering the rule, with public comments having closed in July 2024.
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