Boston Intellectual Property Law Association Comments to USPTO on Notice of Proposed Rulemaking Regarding Terminal Disclaimer Practice

Jonathan Roses authored on behalf of the Boston Intellectual Property Law Association (BIPLA) a July 2024 Comment to USPTO on Notice of Proposed Rulemaking Regarding Terminal Disclaimer Practice. The Comment pointed out that the proposals in the Notice of Proposed Rulemaking (NPRM) are overly broad and run contrary to statutory language and intent, and exceed the authority granted to the USPTO by Congress. The Comment also requested that the USPTO consider the unintended consequences of the NPRM, discussing how the recent historical context suggests that the proposed rule may have been motivated by a goal to reduce drug pricing, but outlined negative impacts across technology areas and entities of various sizes. In addition, the Comment explained potential negative effects of the proposed rule not only on the USPTO itself, but also on disclosure and innovation, and highlighted existing mechanism and incentives that may already address the underlying policy concerns that appear to have motivated the NPRM. The Comment also pointed out two implied justifications for the NPRM that are inherently flawed. Finally, the Comment concluded by strongly suggesting that the USPTO reconsider, withdraw, or substantially revise the NPRM, and that if the USPTO considers a revised rule, that it should do so in the form of another NPRM, rather than a final rule, to allow sufficient time and opportunity for further review, evaluation, and comment from stakeholders.

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