Vorys (Ohio/Texas): Patent Office Proposal Seeks to Expand Applicability of Terminal Disclaimers in Joint Research Agreement Patent Filings

As of December 30, 2020, the USPTO is seeking public comments on proposed changes to terminal disclaimer practice that would increase the ability to file a terminal disclaimer in limited circumstances to obviate a nonstatutory double patenting rejection. The rule changes attempt to address certain loopholes developed through successive legislation and judicial decisions that prevent parties in joint research agreements (JRA) from filing terminal disclaimers in response to a double patenting rejection premised on applications and patents not deemed prior art. MORE.