As 2018 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2017. According to the many readers of Global IP Matters, hot topics included navigating the waters of U.S. patent prosecution, evaluating obviousness, and ITC treatment of standard-essential patents (SEPs).
A recent U.S. District Court decision has clarified a potential danger when filing terminal disclaimers that contain overly-broad language. The U.S. District Court for the Northern District of Illinois in Hagenbuch v. Sonrai Systems interpreted the terminal disclaimer language “I hereby disclaim the terminal part of any patent granted on the above-identified application or any continuation of it” as applying to any continuation application claiming priority from the application in which this terminal disclaimer was filed. Hagenbuch v. Sonrai Systems, 2015 U.S. Dist. LEXIS 39083, *4 (N.D. Ill. Mar. 27, 2015) (emphasis added).
Continue Reading When Prior Terminal Disclaimers Continue to Punish Subsequent Applications: A Potential Danger in Filing an Overly-Broad Terminal Disclaimer