A proposed rule from the US Patent and Trademark Office (USPTO) would significantly alter patent practice in the US, potentially expediting the elimination of related patents without merit-based consideration. The proposal suggests that an inventor’s rights in one patent, voluntarily linked to another in terms of ownership and term, could be extinguished by an invalidity determination of any claim in the related patent. Currently, nearly 20% of patents issued annually are related in this manner, revealing the substantial impact this proposal could have.
Patent litigation often involves numerous related but separate patents derived from a single patent application that includes multiple inventions. Inventors frequently use terminal disclaimers to expedite patent issuance and lessen expenses, even in instances where the obviousness-type double patenting (OTDP) rejection lacks merit. The US Court of Appeals for the Federal Circuit has acknowledged that using terminal disclaimers is a prosecution expedient and not an admission of obviousness.
The proposed rule, however, could weaponize this expedient by stipulating that inventors can only use terminal disclaimers to overcome OTDP rejections if they agree that any invalidated claim in one patent would render all claims in the terminally disclaimed patent unenforceable. This measure could invalidate claims that aren’t actually invalid and even those unrelated to the invalidated claim, running counter to the congressional intent that each patent claim stands presumed valid and enforceable independently.
The USPTO asserts that the proposal aims to foster competition by reducing the cost of challenging related patents. However, no evidence is provided to demonstrate that groups of related patents significantly deter competition or are regularly asserted in litigation. Courts already employ local rules and procedures to limit the number of claims litigated.
Critics argue that the proposed rule would encourage more litigation and strategic behavior by infringers, who could challenge weaker claims to invalidate stronger, unrelated claims in different patents. This would force patent owners to allocate more resources to dispute OTDP rejections, further complicating and lengthening the patent prosecution process. For small inventors and businesses, these additional challenges and costs could render patent acquisition financially prohibitive, impeding access to necessary investment and market entry.
The consequences of this rule could be profound, adversely affecting the US patent system and innovation by deterring patent ownership through increased litigation risks and costs. The USPTO should consider withdrawing the proposal to prevent these potential harms and preserve the integrity of the nation’s patent system.
For further reading, see the original commentary by Alyssa Caridis, Clement Seth Roberts, and Irena Royzman of Orrick.