2024-28263. Terminal Disclaimer Practice To Obviate Nonstatutory Double Patenting; Withdrawal

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Department of Commerce

Patent and Trademark Office

1. 37 CFR Part 1
2. [Docket No. PTO-P-2024-0003]
3. RIN 0651-AD76

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Proposed rule; withdrawal.

SUMMARY:

The USPTO is withdrawing the Notice of Proposed Rulemaking (NPRM) published in the Federal Register on May 10, 2024, that proposes to add a new requirement for an acceptable terminal disclaimer filed to obviate (that is, overcome) nonstatutory double patenting.

DATES:

The proposed rule published at 89 FR 40439 on May 10, 2024, is withdrawn as of December 4, 2024.

FOR FURTHER INFORMATION CONTACT:

Susy Tsang-Foster, Senior Legal Advisor, Office of Patent Legal Administration, at 571-272-7711; or Nicholas Hill, Legal Advisor, Office of Patent Legal Administration, at 571-270-1485.

SUPPLEMENTARY INFORMATION:

This action withdraws a proposed rule published in the Federal Register on May 10, 2024 (89 FR 40439), to add a new requirement for an acceptable terminal disclaimer that is filed to obviate (that is, overcome) nonstatutory double patenting. The proposed rule's comment period was open from May 10, 2024, to July 9, 2024.

Reason for Withdrawal

During the proposed rule's 60-day comment period, the USPTO received more than 300 comments from a variety of stakeholders, including commenters both supporting and opposing the proposal. The comments are publicly available at the Federal eRulemaking Portal at www.regulations.gov/​document/​PTO-P-2024-0003-0001. Of the comments received on the proposed rule, 256 comments were unique.

In light of resource constraints, the USPTO has decided not to move forward with the proposed rule at this time and to withdraw the proposed rule.

Despite the decision not to move forward with the proposed rule at this time, the USPTO appreciates and takes seriously the thoughtful perspectives raised by commenters. The USPTO will continue engaging with its stakeholders as it works to foster a balanced, robust, and reliable intellectual property system.

Conclusion

The proposed rule to add a new requirement for an acceptable terminal disclaimer that is filed to obviate nonstatutory double patenting, published in the Federal Register on May 10, 2024 (89 FR 40439), is hereby withdrawn.

Katherine K. Vidal,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.