Timing to Withdraw a Terminal Disclaimer

Last week, we considered the USPTO’s recent shift in policy revolving around double patenting rejections.  Representatives now risk receiving a Notice of Non-Compliant Amendment, if they ask their Examiners to hold their double patenting rejections in abeyance.

We also discussed how the USPTO already concluded an Applicant cannot overcome a double patenting rejection by filing a conditional (or provisional) Terminal Disclaimer.  Therefore, Applicants must make use of the tools they have: a Terminal Disclaimer (TD) or arguments.

Is there a way to file a TD early in prosecution of a continuation application and then withdraw the TD before issuance?  Yes: a Petition under 37 CFR 1.182 may be filed to withdraw the recordation of the TD.  MPEP 1490 VIII A.

The next question is when the so-called “182 Petition” should be filed.  On one hand, the Applicant could file the 182 Petition as soon as the Applicant amends the independent claims to include subject matter that is patentably distinct from the parent application.  However, the USPTO’s Office of Petitions is unlikely to consider whether the claims are, in fact, patentably distinct.  The Petitions Office likely would leave that decision to the Examiner.  So, although the Petitions Office might grant the petition to withdraw the TD, the Examiner might reinstate the double patenting rejection.  Thus, it might be necessary to re-file the TD.

On the other hand, an Applicant can wait until a Notice of Allowance is received.  In a sense, this waiting is like holding the double patenting rejection in abeyance, until it is the only remaining issue in the prosecution.  However, this timing also could be problematic.  The reason is that the USPTO often takes several months to grant or deny a petition.  Therefore, it is rather likely the Issue Fee will be due, before the result of the petition is decided.

We will continue this subject in the next blog post.  In the interim, Modal can identify situations where petitions should be considered and can assist in determining the proper procedure for the petitions.