By Michael Varco, Principal
Reproduced with permission from The AIPLA Chemical Practice Chronicles, Spring 2016. http://www.aipla.org/
Filing a terminal disclaimer is one option for overcoming a non-statutory double patenting rejection in a patent application. The applicant may either file a terminal disclaimer based on common ownership (“TD-CO”) or, when applicable, file a terminal disclaimer based on a joint-research agreement (“TD-JRA”).
The TD-CO and the TD-JRA have several common characteristics. However, the TDJRA has a more restrictive enforcement constraint than the TD-CO. For example, unlike the TD-CO, the TD-JRA may affect enforcing the patent that forms the basis of the non-statutory double-patenting rejection. The TD-JRA should not place a larger burden on enforcing patents compared to the TD-CO. Accordingly, this article presents a proposal for modifying the TD-JRA’s requirements in order to make the TD-JRA more patent friendly.