USPTO on Restriction Practice, Terminal Disclaimers, and Patent Term Adjustment

MBHB partner Kevin Noonan, Ph.D. is a featured presenter at an IPO-sponsored webinar set for 2:00-3:00 p.m. ET on September 26, 2017. 

USPTO on Restriction Practice, Terminal Disclaimers, and Patent Term Adjustment

Restriction requirement practice has assumed a new importance since the Federal Circuit decision in Gilead v. Natco three years ago, which found that a later-issuing but earlier-expiring patent could serve as an obviousness-type double patenting (OTDP) reference. A restriction requirement lets a patent examiner categorize a patent application as containing multiple inventions and then restrict examination to just a “single” invention. Our panelists — an expert from the USPTO’s Office of Patent Legal Administration and two veteran and savvy patent prosecutors — will analyze the opportunities and pitfalls for patent prosecutors raised by restriction requirements, discussing such topics as:

  • After a restriction requirement, how can a patent applicant make sure that the subsequent application falls into the section 121 “safe harbor,” while also garnering the longest protection through patent term adjustment?;

  • What does it mean for claims in a new application to be “consonant” with those withdrawn from the earlier case?;

  • The new amendment to the Manual of Patent Examining Procedure that describes when a terminal disclaimer can be withdrawn; and

  • Lessons learned from cases such as Hagenbuch v. Sonrai (E.D. Ill. 2016) on the potential danger of filing an ill-worded terminal disclaimer, and Janssen v. Celltrion (D. Mass. 2016) on serious consequences from filing a continuation instead of a divisional.

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