In re Yamazaki –Terminal Disclaimers and Reissue Applications

By Gerald M. Murphy, Jr.

On December 6, 2012, the Court of Appeals for the Federal Circuit held in In re Yamazaki that once a patent has issued, which is subject to a terminal disclaimer, the patent term surrendered by the filing of the terminal disclaimer cannot be reclaimed by filing a reissue application and withdrawing the terminal disclaimer. 

In Yamazaki, Yamazaki’s pending application (which was a pre-GATT application and therefore would expire 17 years after the patent issued, i.e., on January 30, 2018) was rejected on the grounds of obviousness-type double patenting over Yamazaki’s earlier U. S. Patent 4,581,476 (which had an expiration date of December 22, 2003).  However, instead of traversing the rejection, Yamazaki filed a terminal disclaimer over the ‘476 patent.  Before the patent issued, Yamazaki further amended its claims and filed a petition to withdraw the terminal disclaimer.  Unfortunately, the PTO did not act on the petition before the patent granted.  Yamazaki sought to have the terminal disclaimer withdrawn by filing a petition after the grant of the patent (which petition was denied) and then by filing a reissue application.  In a well-reasoned opinion, the CAFC explained that a reissue application cannot be used to extend the term of the patent which being reissued.

Although the number of pre-GATT patents that are still issuing is relatively small and therefore a 15 year shortening of patent term due to a terminal disclaimer is unlikely in the future, even a few days in reduction in patent term can be significant in pharma patents.  Regardless of the technology involved, if a mistake is made and it becomes necessary to withdraw a terminal disclaimer, a patent applicant has essentially three options: (1) file a petition to withdraw the terminal disclaimer (as discussed in Yamazaki), which petition must be granted before the patent issues or (2) file a terminal continuation application, which automatically cancels the terminal disclaimer.  In the event that option (1) is chosen, the petition must be carefully monitored and if it is not granted before the payment of the issue fee is due, a Request for Continued Examination could be filed (to give the PTO more time to act on the petition) or file a continuation application.  Furthermore, it may be advisable to wait until all other rejections have been withdrawn before filing a terminal disclaimer.  Waiting until the application is otherwise in condition for allowance allows for the presentation of additional claim amendments that may overcome the double patenting rejection and thereby obviate the necessity of filing a terminal disclaimer.