Tips For Avoiding Problematic Terminal Disclaimers

The Federal Circuit’s recent decisions in STC.UNM v. Intel Corp.[1] and In re Dinsmore[2] illustrate dangers associated with filing a terminal disclaimer to overcome a nonstatutory double-patenting rejection. In each case, the appellant tried to address the requirement that the terminally disclaimed patent had to be commonly owned with a patent owned by another party in order to be enforceable. Unfortunately, the appellants found that the options for addressing the common ownership requirement are very limited once the patent has issued. In each case, the problematic terminal disclaimer might have been avoided through more careful prosecution.