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Practice Tips for Avoiding Terminal Disclaimers and Maintaining PTA

By Leslie A. McDonell and Christina M. Rodrigo

©2017. Published in Landslide, Vol. 10, No. 2, November/December 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

The doctrine of obviousness-type double patenting (OTDP) was developed when US patents had a 17-year patent term. Because that patent term ran from the patent issue date, the filing of continuation applications on obvious variants of a previously claimed invention had the potential to extend the patent monopoly for the invention. The doctrine of OTDP was originally intended to prevent this result by requiring terminal disclaimers of later, commonly owned patents that did not claim patentably distinct subject matter over the earlier issued patents. Thus, in theory at least, all commonly owned patents that relate to a single invention or its obvious variants would have a single expiration date. Because the patent term is now 20 years from the first nonprovisional filing date, later-filed continuations and divisionals will expire on the same date as a parent patent, unless a patent is awarded patent term adjustment (PTA) from United States Patent and Trademark Office (USPTO) delays. This article will discuss practice tips to avoid filing terminal disclaimers that could reduce or eliminate PTA and shorten the patent term.

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