Continuations, Patent Term Adjustment, and Terminal Disclaimers: Why Applicants Should Not Give Away Patent Term Automatically
Continuation applications can be powerful tools in a patent strategy. They allow applicants to pursue additional claim scope based on the original disclosure, often after the first application has already issued or after the commercial direction of the technology becomes clearer.
But continuation practice also comes with a common issue: obviousness-type double patenting.
When an examiner issues an obviousness-type double patenting rejection, many applicants assume the only practical response is to file a terminal disclaimer. In some cases, that may be the right decision. But it should not be automatic.
The reason is patent term.
Although continuation applications may share the same priority date as a parent application, Patent Term Adjustment can still result in different expiration dates. If a continuation receives PTA, that additional term may have real commercial value. Filing a terminal disclaimer can give up that later-expiring term.
That is why applicants should carefully review whether the continuation claims are actually patentably distinct from the claims of the related patent.
A recent Sanofi-related PTAB decision, Ex parte Baurin, illustrates the point. In that case, the applicant faced multiple obviousness-type double patenting rejections. Instead of simply filing a terminal disclaimer, the applicant challenged the rejections on appeal. The Board reversed the rejections, and later denied the examiner’s request for rehearing.
The practical lesson is not that every double patenting rejection should be appealed. Many should not be.
The lesson is that applicants should not blindly accept a terminal disclaimer when the continuation claims are meaningfully different and supported by the original disclosure. If the claims are distinct, and if additional patent term matters, the rejection should be evaluated carefully before surrendering term.
This is especially important in biotechnology, pharmaceuticals, medical devices, and other high-value technologies where additional patent term can affect licensing, investment, exclusivity, and enforcement strategy.
Continuations should not be treated as routine paperwork. They can protect different aspects of the same disclosed invention, including commercially important embodiments that were not claimed in the first patent.
Before filing a terminal disclaimer, applicants should ask:
Are the continuation claims actually patentably distinct?
Does the continuation have potential Patent Term Adjustment?
Would a terminal disclaimer give up meaningful patent term?
Is there claim scope within the original disclosure that supports a distinct continuation strategy?
The answer will depend on the facts of each case. But the broader point is clear: patent term has value, and applicants should not give it away without reviewing the rejection carefully.
https://www.uspto.gov/sites/default/files/documents/2024_002920_Decision_on_Request_for_Rehearing_20251218.pdf
