Terminal Disclaimers Required to Overcome Judicially-Created Double Patenting Rejections in Utility and Plant Applications Filed on or After June 8, 1995 Section 532 of Public Law 103-465, 108 Stat. 4809 (1994), amended 35 U.S.C. 154(a)(2) to provide that any patent issuing on a utility or plant application filed on or after June 8, 1995 will expire twenty years from its filing date, or, if the application claims the benefit of an earlier filed application under 35 U.S.C. 120, 121, or 365(c), twenty years from the earliest filing date for which a benefit under 35 U.S.C. 120, 121, or 365(c) is claimed. Therefore, any patent issuing on a continuing utility or plant application filed on or after June 8, 1995 will expire twenty years from the earliest filing date for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c), subject to the provisions of 35 U.S.C. 154(b). A number of applicants have argued that a terminal disclaimer under 37 C.F.R. 1.321 should not be required in a continuing application filed on or after June 8, 1995 to overcome a judicially-created double patenting rejection based upon an application for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c), as any patent issuing on such continuing application would expire no later than the patent issuing on the application which formed the basis for the rejection. The above-mentioned amendment to 35 U.S.C. 154 notwithstanding, there are at least two reasons for insisting upon a terminal disclaimer to overcome a judicially-created double patenting rejection in such an application. First: 35 U.S.C. 154(b) includes provisions for patent term extension based upon various prosecution delays during the application process. Thus, 35 U.S.C. 154 does not currently ensure that any patent issuing on a continuing utility or plant application filed on or after June 8, 1995 will necessarily expire twenty years from the earliest filing date for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c). Also, legislation is pending in Congress (H.R. 400 and S. 507, 105th Cong., 1st Sess. (1997)) that would expand the opportunity for adjusting patent terms, prospectively or retroactively, for utility and plant applications applied for on or after June 8, 1995. Therefore, whether under the present statutory provision or pending or future changes to it, the current twenty-year term provision of 35 U.S.C. 154(a)(2) cannot be relied upon in many cases as ensuring the expiration date of a patent issuing on a utility or plant application filed on or after June 8, 1995. Second: 37 C.F.R. 1.321(c)(3) requires that a terminal disclaimer filed to obviate a double patenting rejection include a provision that any patent granted on that application be enforceable only for and during the period that the patent is commonly owned with the application or patent which formed the basis for the rejection. This requirement serves to avoid the potential for harassment of an accused infringer by multiple parties with patents covering the same patentable invention (37 C.F.R. 1.601(n)). See, e.g., In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761,767-70 (CCPA 1982). Not insisting upon a terminal disclaimer to overcome a judicially-created double patenting rejection in an application subject to twenty-year term under 35 U.S.C. 154(a)(2) would result in the potential for the problem that 37 C.F.R. 1.321(c)(3) was promulgated to avoid. Accordingly, a terminal disclaimer under 37 C.F.R. 1.321 is (still) required in an application to overcome a judicially-created double patenting rejection, even if the application was filed on or after June 8, 1995 and claims the benefit under 35 U.S.C. 120, 121, or 365(c) of the filing date of an application which forms the basis for the rejection. Examiners should respond to arguments that a terminal disclaimer under 37 C.F.R. 1.321 should not be required in a continuing application filed on or after June 8, 1995 to overcome a judicially-created double patenting rejection due to the change to 35 U.S.C. 154 by citing this Official Gazette notice. Inquiries regarding this matter should be directed to Senior Legal Advisor Robert W. Bahr at (703) 305-9285. September 5, 1997 Stephen G. Kunin Deputy Assistant Commissioner for Patent Policy and Projects