The Benefits, Consequences and Pitfalls of Terminal Disclaimers

Intellectual property partner Francis DiGiovanni and counsel Claudia Schultze coauthored an article for The Legal Intelligencer that addresses the basics of terminal disclaimers and explores their pitfalls, vulnerabilities, and benefits.

The authors explain that a terminal disclaimer — a seemingly simple document that shortens a patent’s life by declaring that it expires upon the expiration of another commonly owned patent — is replete with technical and substantive traps for the unwary and with far-reaching consequences during both prosecution and enforcement of U.S. patents.

DiGiovanni and Schultze expand on what a terminal disclaimer can achieve in patent prosecution and litigation. They also detail how straying from the United States Patent and Trademark Office terminal disclaimer form’s language may have unintended consequences, why the timing of the filing of a terminal disclaimer is important, and other challenges that could come from terminal disclaimers if not carefully drafted and submitted.

The full article is available for The Legal Intelligencer subscribers.