Post-Allowance 182 Petitions for Terminal Disclaimers

Two weeks ago, we began considering the USPTO’s policy change regarding the holding of a double patenting rejection in abeyance.  This change might result in unnecessary Terminal Disclaimer (TD) filings.  Thus, last week, we considered the timing of a 182 Petition to withdraw recordation of a TD.  This week, we will consider in detail the reality of filing a 182 Petition upon receipt of a Notice of Allowance.

First, it is not clear that Applicants will remember to file such a Petition: the USPTO will not remind the Applicant about the TD.  Accordingly, the US representative should remind the Applicant.  The reminder would be part of the post-allowance review of the application by the US representative.  However, Applicants might decline a post-allowance review, and, even then, US law firms might not include TD reviews in their post-allowance reviews.

Second, the procedure is fairly expensive.  The US representative will charge a service fee for the post-allowance review discussed above.  Next, the USPTO currently charges $420 for a 182 Petition.  In addition, because the Notice of Allowance closes prosecution, the Petition likely must be accompanied by a Request for Continued Examination (RCE) to re-open prosecution.  (Such an RCE would avoid last week’s problem of the Issue Fee being due before the Petitions Office considers the Petition.)  The RCE can be expensive, as the undiscounted fee for an RCE is at least $1360 currently.  US representatives will also charge service fees for the preparation and filing of the 182 Petition, as well as the RCE.

Third, the procedure is unfamiliar to some people.  And, in any case, the USPTO currently indicates it is unlikely to grant such a petition.  MPEP 1490 VIII A  (“Petitions seeking to reopen the question of the propriety of the double patenting rejection that prompted the filing of the terminal disclaimer have not been favorably considered.”)

So, prematurely acquiescing in filing a TD can result in a procedure that is likely to be forgotten, expensive to fix, and is unlikely to be “favorably considered.”  Thus, Applicants should present arguments against their double patenting rejections, rather than asking the Examiner to hold those rejections in abeyance or immediately filing a TD.  Modal PLLC can help Applicants present arguments in an attempt to overcome double-patenting rejections.

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