The United States Patent and Trademark Office (USPTO) has recently introduced a new rule regarding terminal disclaimers (TD) in patents to address obviousness-type double patenting (ODP) rejections. This rule requires Applicants to assert that a patent subject to a TD will remain enforceable only if it is not tied to any other patent where any claim has been deemed unpatentable or invalid over prior art. Additionally, the USPTO has proposed significant increases in patent fees effective from October 1, 2024, to discourage late-filed continuations, excessive claims, and protracted prosecution.

These changes will have a significant impact on patent drafting, filing, and prosecution strategies. Applicants and patent counsel must adapt to the new rules to ensure the enforceability of their patents. One key strategy is to consider filing multiple independent claims covering a wide spectrum of breadth in the same application to avoid ODP rejections. This approach can help Applicants navigate the new TD rule and protect the enforceability of their patents.

Another important consideration is the use of omnibus specifications to mine for different feature combinations in continuations. Applicants should carefully draft claims to avoid ODP rejections and consider filing multiple separate applications on the same day with a common specification to reduce the likelihood of ODP rejections. These strategies can help Applicants protect their inventions and navigate the changing patent landscape.

During prosecution, Applicants should be vigilant in checking for the safe harbor under Section 121 and argue to avoid obviousness allegations by amending claims with new or rearranged features. Practitioners must use advanced techniques in negotiations with examiners to convince them of non-obviousness and consider appeal and pre-appeal conferences to address rejection issues.

The proposed fee increases, including excess claims fees and continuation surcharges, will also impact drafting, filing, and prosecution strategies. Applicants must weigh the costs against the risks of TDs and carefully plan their filing and prosecution decisions. It is essential to submit comments on the NPRM by July 9, 2024, and start preparing for the potential changes in filing, prosecution, and budgeting strategies.

In conclusion, the new rules and fee increases introduced by the USPTO will require Applicants and patent practitioners to rethink their approach to patent applications. By understanding the implications of these changes and implementing proactive strategies, Applicants can protect their inventions and navigate the evolving patent landscape effectively.