Terminal disclaimer

In some circumstances a patentee may obtain a seeond patent that is obvious in view of its own earlier patent. The Patent Offiee typically allows a patent applieant to obtain sueh a patent only if the applicant files a terminal disclaimer for the later patent, diselaiming the term of the later patent that extends beyond the term of original patent, so that both patents expire on the same day. In those cases in which the brand-name company files a terminal diselaimer for the later patent, the later patent does not provide rights beyond those of the earlier patent because both expire on the same day. This is the rationale behind the Patent Office s allowing the later patent. The later patent does provide additional protection from generic competition, however, if it generates a second, later-expiring 30-month stay. 

Fosamax provides an example of how double-patenting with a terminal disclaimer may result in multiple 30-month stays. The brand-name company listed and initially sued on the earlier patent. No. 5,849,726 (the 726 patent), which claims a method for treating and/or preventing bone loss using the anhydrate form of alendronate sodium. The later patent. No. 6,008,207 (the 207 patent), was a continuation of the 726 patent. It claims a method for treating bone resorption and a method for... 

In re Lonardo, 119 F.3d 960, 965 (Fed. Cir. 1997) See In re Goodman, 11 F.3d 1046, 1052 (Fed. Cir. 1993). The Patent Office allows a terminal disclaimer to cure an obviousness-type double patenting rejection only when the same entity owns both patents. 

The end of the patent term under the 17- or 20-year term can be advanced by failure to pay maintenance fees or by a terminal disclaimer. The end of the patent term can be extended in some cases by the patent term extension provisions. See section 2.4.2. 

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