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Strategies helps businesses and individuals solve the complexities of dealing with the government at every level. Our team of specialists concentrate exclusively on government affairs, representing clients nationwide who need assistance with public policy, advocacy, and government relations strategies.
This unique program provides innovative and affordable opportunities to startups and early-stage emerging companies with a solid technology or scientific foundation. We help companies that have a quality management team in place and do not have other significant legal representation.
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Articles + Publications June 12, 2024
Locke Lord LLP
In the Notice, the USPTO proposed adding a new requirement for acceptable terminal disclaimers to obviate nonstatutory double patenting. The stated goal for this rule change is “to promote competition by lowering the cost of challenging groups of patents tied by terminal disclaimers.” Under the proposed rule, the USPTO will not issue a patent to a common owner or inventor with a claim that conflicts with a claim of a second patent unless the terminal disclaimer includes an additional agreement that the patent with the terminal disclaimer will not be enforced if any claim of the second patent is invalidated by prior art.
The USPTO provides, as an example of how the proposed rule would further the stated goal, a litigation in which a patent owner is enforcing a patent along with several other patents that are tied by one or more terminal disclaimers to that patent, wherein a competitor could seek to have the court narrow any validity disputes to address only that patent. The USPTO believes this will lower the litigation costs for parties alleged to have infringed a number of patents within a single family, since there would be only a single infringement action brought against the infringer, rather than an action for each patent in the family.
Since the publication of this notice, the Office has received numerous comments, both in favor and challenging the proposed rule for a number of reasons. In particular, critics have said this proposed rule change will increase the cost of obtaining a patent and would make it easier to invalidate patent families linked by a single invention. The USPTO has answered some of the comments by suggesting a terminal disclaimer is voluntary. While this is true, a terminal disclaimer can sometimes be the only reasonable means for an applicant to overcome a double patenting rejection.
Notable critics of the proposed rule include former USPTO directors and deputy directors, who have called for the USPTO to withdraw the proposed rule altogether. Should the rule be adopted, the change could have serious implications for continuation practice and applicants looking to protect their inventions using continuation applications.
The time for submitting comments on the proposed rulemaking ends July 9, 2024.
Speaking Engagements
Tobacco and Nicotine Law and Regulation
October 8, 2025 | 11:00 AM – 5:05 PM ET
Virtual
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Boston Marriott Long Wharf
Leading the energy evolution.
Learn more
From compliance to the courtroom, we have you covered.
Learn more
Helping you focus on what matters – improving human health.
Learn more
Trusted advisors to leading insurers for 100+ years.
Learn more
Unlocking value in the middle market and beyond.
Learn more
Full-service legal advice from coast to coast.
Learn more
Applying radical applications of common sense
Explore More
Our standard-setting client experience program.
Explore more
Delivering life-changing help to those most in need.
Explore More
Our firm’s greatest asset is our people.
Explore More
Market-leading eDiscovery and data management services.
Explore more
The Pepper Center for Public Services
Explore more
Strategies helps businesses and individuals solve the complexities of dealing with the government at every level. Our team of specialists concentrate exclusively on government affairs, representing clients nationwide who need assistance with public policy, advocacy, and government relations strategies.
This unique program provides innovative and affordable opportunities to startups and early-stage emerging companies with a solid technology or scientific foundation. We help companies that have a quality management team in place and do not have other significant legal representation.
eMerge’s lawyers and technologists work together to deliver strategic end-to-end eDiscovery and data management solutions for litigation, investigations, due diligence, and compliance matters. We help clients discover the information necessary to resolve disputes, respond to investigations, conduct due diligence, and comply with legal requirements.
Stay ahead of the curve and in touch with our latest thinking on the issues that are top of mind across our practices and industry sectors.
Change happens fast in today’s turbulent world. Stay on top of the latest with our industry-specific channels.
Take a closer look at how we partner with clients to help them realize their goals.