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