Skip over navigation

search for patents | search for trademarks

1490 Disclaimers [R-01.2024]

35 U.S.C. 253 Disclaimer.

(a) IN GENERAL.—Whenever a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing and recorded in the Patent and Trademark Office, and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.
(b) ADDITIONAL DISCLAIMER OR DEDICATION.—In the manner set forth in subsection (a), any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.

37 CFR 1.321 Statutory disclaimers, including terminal disclaimers.

(a) A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. The disclaimer, to be recorded in the Patent and Trademark Office, must:
- (1) Be signed by the patentee, or an attorney or agent of record;
- (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term, will be refused recordation;
- (3) State the present extent of patentee’s ownership interest in the patent; and
- (4) Be accompanied by the fee set forth in § 1.20(d).
(b) An applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
- (1) Be signed by the applicant or an attorney or agent of record:
- (2) Specify the portion of the term of the patent being disclaimed;
- (3) State the present extent of applicant’s ownership interest in the patent to be granted; and
- (4) Be accompanied by the fee set forth in § 1.20(d).
(c) A terminal disclaimer, when filed to obviate judicially created double patenting in a patent application or in a reexamination proceeding except as provided for in paragraph (d) of this section, must:
- (1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
- (2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
- (3) Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.
(d) A terminal disclaimer, when filed in a patent application or in a reexamination proceeding to obviate double patenting based upon a patent or application that is not commonly owned but was disqualified as prior art as set forth in either § 1.104(c)(4)(ii) or (c)(5)(ii) as resulting from activities undertaken within the scope of a joint research agreement, must:
- (1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
- (2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or be signed in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
- (3) Include a provision waiving the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the patent or any patent granted on the application which formed the basis for the double patenting, and that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the patent, or any patent granted on the application, which formed the basis for the double patenting are not separately enforced.

Pre-AIA 37 CFR 1.321 Statutory disclaimers, including terminal disclaimers.

*****

(b) An applicant or assignee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
- (1) Be signed:
  - (i) By the applicant, or
  - (ii) If there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
  - (iii) If there is an assignee of record of the entire interest, by such assignee, or
  - (iv) By an attorney or agent of record;
- (2) Specify the portion of the term of the patent being disclaimed;
- (3) State the present extent of applicant’s or assignee's ownership interest in the patent to be granted; and
- (4) Be accompanied by the fee set forth in § 1.20(d).

*****

35 U.S.C. 253(a) corresponds to the provisions of pre-AIA 35 U.S.C. 253, first paragraph except that the first sentence of pre-AIA 35 U.S.C. 251 includes the phrase “without any deceptive intention” between “Whenever” and “a claim.” Effective September 16, 2012, Public Law 112-29, sec. 20, 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended 35 U.S.C. 253 to eliminate the “without any deceptive intention” clause. 35 U.S.C. 253(b) corresponds to the provisions of pre-AIA 35 U.S.C. 253, second paragraph.

A disclaimer is a statement filed by an owner (in part or in entirety) of a patent or of a patent to be granted (i.e., an application), in which said owner relinquishes certain legal rights to the patent. The owner of a patent or an application is the original inventor(s) who has/have not assigned away their rights or the assignee(s) of the original inventor(s), or a combination of the two. The patent or application is assigned by one assignment or by multiple assignments which establish a chain of title from the inventor(s) to the assignee(s).

There are two types of disclaimers: a statutory disclaimer and a terminal disclaimer. A statutory disclaimer is a statement in which a patent owner relinquishes legal rights to one or more claims of a patent. A terminal disclaimer is a statement in which a patentee or applicant disclaims or dedicates to the public the entire term or any terminal part of the term of a patent or patent to be granted (filed in an application). Although a statutory disclaimer and a terminal disclaimer are both provided for by statute, the manner in which the two terms have been used historically distinguishes them. The phrase “statutory disclaimer” is used to denote a disclaimer of one or more claims of an issued patent whereas the phrase “terminal disclaimer” is used to denote a disclaimer of the entire term or any terminal part of the term of a patent or a patent to be granted.

I. STATUTORY DISCLAIMERS

Under 35 U.S.C. 253(a) and 37 CFR 1.321(a), the owner of a patent may disclaim a complete claim or claims of the patent. This may result from a lawsuit or because the patent owner has reason to believe that the claim or claims are too broad or otherwise invalid. A statutory disclaimer is not, however, a vehicle for adding or amending claims, because there is no provision for doing so in the statute (35 U.S.C. 253) or the rules (37 CFR 1.321). Thus, claims of a patent cannot be disclaimed in favor of new claims to be added to the patent or an amendment to existing claims. If the patent is involved in an interference or a trial before the Patent Trial and Appeal Board (PTAB), see 37 CFR 41.127(a) and 37 CFR 42.80.

As noted above, a statutory disclaimer is a statement in which a patent owner relinquishes legal rights to one or more complete claims of a patent. However, a patent owner’s disclaimer does not necessarily relinquish the rights of the public or a third party. See, e.g., Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1384, 122 USPQ2d 1301, 1310 (Fed. Cir. 2017)(discussing cases where courts "have not readily extended the effects of disclaimer to situations where others besides the patentee have an interest that relates to the relinquished claims”); Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 967 n.5, 58 USPQ2d 1869, 1878 n.5 (Fed. Cir. 2001)(“[a] patent owner cannot avoid double patenting by disclaiming the earlier patent”).

II. TERMINAL DISCLAIMERS

35 U.S.C. 253(b) and 37 CFR 1.321(a) and (b) also provide for the filing by a patentee or applicant of a terminal disclaimer which disclaims or dedicates to the public the entire term or any terminal part of the term of a patent or patent to be granted. Note that the filing of a terminal disclaimer may affect any patent term adjustment provided under 35 U.S.C. 154(b). Specifically, 35 U.S.C. 154(b)(2)(B) states that “[n]o patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.” See also In re Cellect, LLC, 81 F.4th 1216, 2023 USPQ2d 1011 (Fed. Cir. 2023).

37 CFR 1.321(c) specifically provides for the filing of a terminal disclaimer in an application or a reexamination proceeding for the purpose of overcoming a nonstatutory double patenting rejection. See MPEP § 804.02.

37 CFR 1.321(d) specifically provides for the filing of a terminal disclaimer in an application or a reexamination proceeding for the purpose of overcoming a nonstatutory double patenting rejection based on a U.S. patent or application that is not commonly owned but was disqualified pursuant to either 37 CFR 1.104(c)(4)(ii) or 1.104(c)(5)(ii) as the result of activities undertaken within the scope of a joint research agreement.

37 CFR 1.321(a) provides for a patentee to terminally disclaim a patent, but does not specifically provide for terminal disclaimers with common ownership enforcement provisions or joint research agreement enforcement provisions to obviate any nonstatutory double patenting issues. For terminal disclaimers filed under 37 CFR 1.321(c) or (d) in patents not under reexamination, such terminal disclaimers typically will be reviewed by Office staff only to the extent necessary to determine whether the requirements of 37 CFR 1.321(a) are met.

III. SIGNING AND SUPPORTING A DISCLAIMER

A. Disclaimer Filed in a Patent or Reexamination Proceeding

Pursuant to 37 CFR 1.321(a) and pre-AIA 37 CFR 1.321(a), a statutory disclaimer or a terminal disclaimer filed in a patent or a reexamination proceeding must be signed by either (1) the patentee (the assignee, the inventor(s) if the patent is not assigned, or the assignee and the inventors who have ownership interest if the patent is assigned-in-part), or (2) an attorney or agent of record. A registered practitioner acting in a representative capacity under 37 CFR 1.34 is not permitted to sign the disclaimer. Where the attorney or agent of record signs the disclaimer, there is no need to comply with 37 CFR 3.73.

For a terminal disclaimer filed under 37 CFR 1.321(c) or (d) in a reexamination proceeding to obviate a nonstatutory double patenting rejection, the terminal disclaimer must be signed in accordance with 37 CFR 1.321(a)(1) and must be filed in the reexamination proceeding in which the rejection was made.

B. Terminal Disclaimer in an Application

37 CFR 1.321(b) and pre-AIA 37 CFR 1.321(b)(1) set forth the signature requirements for a terminal disclaimer filed in an application.

For a terminal disclaimer filed under 37 CFR 1.321(c) or (d) in an application to obviate a nonstatutory double patenting rejection, the terminal disclaimer must be signed in accordance with 37 CFR 1.321(b)(1) and must be filed in the application in which the rejection was made.

Note that the signature requirements for terminal disclaimers filed in a pending application differ depending on the filing date of the application (compare 37 CFR 1.321(b)(1) with pre-AIA 37 CFR 1.321(b)(1) reproduced above). If the application filing date is on or after September 16, 2012, see subsection 1, below; if the application was filed was filed before September 16, 2012, see subsection 2, below.

Note that the signature on the disclaimer need not be an original signature. Pursuant to 37 CFR 1.4(d)(1)(ii), the submitted disclaimer can be a copy, such as a photocopy or facsimile transmission of an original disclaimer.

1. Terminal Disclaimer in Application Filed on or After September 16, 2012

A terminal disclaimer filed in a pending application that was filed on or after September 16, 2012 must be signed by the applicant or an attorney or agent of record. See 37 CFR 1.321(b)(1).

The word “applicant,” in this context, refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in 37 CFR 1.43, 1.45, or 1.46. Under 37 CFR 1.43, “applicant” refers to the legal representative of a deceased or legally incapacitated inventor. Under 37 CFR 1.45, “applicant” refers to the inventors; if fewer than all joint inventors are applying for a patent as provided in 37 CFR 1.45, the phrase “the applicant” means the joint inventors who are applying for the patent without the omitted inventor(s). Under 37 CFR 1.46, “applicant” refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under 37 CFR 1.46 and not the inventor.

An assignee who is not an applicant must file a request to change the applicant under 37 CFR 1.46(c), including an application data sheet under 37 CFR 1.76 specifying the applicant in the application information section, and a 37 CFR 3.73(c) statement to become the 37 CFR 1.321(b)(1) applicant in order to file and sign a terminal disclaimer.

In order to obviate a non-statutory double patenting rejection, the entirety of the ownership must sign the terminal disclaimer disclaiming with respect to the reference on which the rejection is based, or multiple terminal disclaimers so disclaiming. Thus, if a 37 CFR 1.321(b)(1) applicant who is not the owner (e.g., an inventor who assigned away the rights to the application) signs a terminal disclaimer, the terminal disclaimer will not be entered and the non-statutory double patenting rejection will not be withdrawn by the examiner. The same is true if a 37 CFR 1.321(b)(1) applicant representing less than the entirety of the ownership (see 37 CFR 1.42(c)) signs a terminal disclaimer, and a terminal disclaimer from the remainder of the ownership has not also been filed.

The terminal disclaimer may also be filed by an attorney or agent of record (a registered practitioner acting in a representative capacity under 37 CFR 1.34 is not permitted to sign the disclaimer). Where the attorney or agent of record signs the disclaimer, there is no need to comply with 37 CFR 3.73.

2. Terminal Disclaimer in Application Filed Before September 16, 2012

A terminal disclaimer filed in a pending application that was filed before September 16, 2012 must be signed by a proper party as follows:

(1) the applicant where the application has not been assigned,
(2) the applicant and the assignee where each owns a part interest in the application,
(3) the assignee where assignee owns the entire interest in the application, or
(4) an attorney or agent of record.

See pre-AIA 37 CFR 1.321(b)(1).

Where the assignee signs the terminal disclaimer, there is a requirement to comply with pre-AIA 37 CFR 3.73(b) in order to satisfy pre-AIA 37 CFR 1.321, unless an attorney or agent of record signs the terminal disclaimer. In order to comply with pre-AIA 37 CFR 3.73(b), the assignee’s ownership interest must be established by:

(1) filing in the application or patent evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11, or
(2) specifying in the record of the application or patent where such evidence is recorded in the Office (e.g., reel and frame number, etc.). The submission with respect to pre-AIA 37 CFR 3.73(b) to establish ownership must be signed by a party authorized to act on behalf of the assignee. See also MPEP § 324 as to compliance with pre-AIA 37 CFR 3.73(b). A copy of the “Statement Under 37 CFR 3.73(b),” which is reproduced in MPEP § 324, may be sent by the examiner to applicant to provide an acceptable way to comply with the requirements of pre-AIA 37 CFR 3.73(b).

A statement of assignee interest in a terminal disclaimer that “A and B are the owners of 100% of the instant application...” is sufficient to satisfy the pre-AIA 37 CFR 1.321(b)(3) requirement that a terminal disclaimer “state the present extent of applicant’s or assignee’s ownership interest in the patent to be granted.” Although the quoted statement does not identify what specific percentage is owned by A and what specific percentage is owned by B, the statement does provide consent to the terminal disclaimer by the entirety of the ownership of the application (A and B own all of the invention, regardless of the individual percentages they own).

IV. PROCESSING IN CERTIFICATES OF CORRECTION BRANCH

The Certificates of Correction Branch is responsible for the processing of all statutory disclaimers filed under 35 U.S.C. 253(a) and 37 CFR 1.321 and all terminal disclaimers filed under 35 U.S.C. 253(b) and 37 CFR 1.321, except for terminal disclaimers filed in a pending application or reexamination proceeding. This processing involves:

(A) Determining the compliance of the disclaimer with 35 U.S.C. 253 and 37 CFR 1.321(a) and 3.73;
(B) Notifying applicant or patentee when the disclaimer is not acceptable;
(C) Recording the disclaimers in the record of the application file;
(D) Providing the statutory disclaimer data and terminal disclaimer data (when the terminal disclaimer is filed in a patent) for printing in the Official Gazette; and
(E) Providing a certificate of correction for patents when the terminal disclaimer was entered during the pendency of the application but the statement indicating that the patent is subject to a terminal disclaimer was not printed on the title page of the patent and/or the asterisk associated with the statement was not placed before the patent issue date in the right hand corner.

V. PROCESSING OF TERMINAL DISCLAIMER IN PENDING APPLICATION OR PROCEEDING

A. eTerminal Disclaimers

The Office provides for the submission of eTerminal Disclaimers (eTDs) via the USPTO patent electronic filing system. A web-based eTD may be filled out completely online using web-screens and can include up to 50 reference applications and 50 reference patents. An eTD that meets all requirements is auto-processed, approved immediately upon submission, and directly loads into the USPTO databases which will increase accuracy and facilitate faster processing. Note that eTDs are accepted only for pending nonprovisional utility applications (including national stage and reissue) and pending design applications (including reissue).

The eTD can only be used if:

1. the inventor(s) named as the applicant(s) in the application own(s) 100% of the entire right, title and interest;
2. the assignee and/or obligated assignee named as the applicant in the application owns 100% of the entire right, title and interest; or
3. a combination of inventor(s) and partial assignee(s) named as the applicant(s) in the application together own 100% of the entire right, title and interest.

Any eTD submitted after the date of payment of the issue fee, but prior to the patent grant date must include a certificate of correction requesting that the face of the patent be amended to state that the patent is subject to a terminal disclaimer, unless the face of the patent already includes the language that the patent is subject to a terminal disclaimer.

Requests for terminal disclaimers for plant patent applications, reexaminations, and terminal disclaimers based on a joint research agreement must be filed by paper or a scanned image PDF submitted via the USPTO patent electronic filing system. For more information about eTerminal Disclaimers, refer to www.uspto.gov/ TerminalDisclaimer.

B. Terminal Disclaimers in Paper or Scanned Image Format

Where a terminal disclaimer other than an eTD is filed in an application pending in a TC, it will be processed by a Paralegal Specialist of the Patent Legal Research Center. The paralegal will:

(A) Determine compliance with 35 U.S.C. 253 and 37 CFR 1.321 and 3.73, and ensure that the appropriate terminal disclaimer fee set forth in 37 CFR 1.20(d) is/was applied;
(B) Notify the examiner having charge of the application whether the terminal disclaimer is acceptable or not by completing a Terminal Disclaimer review decision form;
(C) Where the terminal disclaimer is not acceptable, indicate the nature of the informalities so that the examiner can inform applicant in the next Office action.

The paralegal completes a Terminal Disclaimer review decision form to notify the examiner of the nature of any informalities in the terminal disclaimer. The examiner should notify the applicant of the informalities in the next Office action, or by interview with applicant if such will expedite prosecution of the application.

The approval of a terminal disclaimer by the paralegal is not an indication that the terminal disclaimer correctly identifies the target application or patent that was the basis for any outstanding nonstatutory double patenting rejection. The examiner must determine whether the correct target application or patent is identified in the terminal disclaimer before withdrawing the nonstatutory double patenting rejection(s) based on the target application or patent.

VI. OTHER MATTERS DIRECTED TO TERMINAL DISCLAIMERS

A. Requirements of Terminal Disclaimers

A proper terminal disclaimer must disclaim the terminal part of the statutory term of any patent granted on the application being examined (or the statutory term of the patent) which would extend beyond the expiration date of the full statutory term, shortened by any terminal disclaimer, of the patent (or of any patent granted on the application) that is the basis of the nonstatutory double patenting. Note the exculpatory language in the second paragraph of the sample terminal disclaimer forms, PTO/SB/25, PTO/SB/25a, PTO/SB/26, PTO/SB/26a, PTO/AIA/25, and PTO/AIA/26, provided at the end of this Chapter. That language (“In making the above disclaimer, the owner does not disclaim...”) is permissible in a terminal disclaimer.

A terminal disclaimer must state that the agreement is to run with any patent granted on the application being examined and is to be binding upon the grantee, its successors, or assigns.

A terminal disclaimer filed to obviate a nonstatutory double patenting rejection based on a commonly owned reference patent or application must comply with the requirements of 37 CFR 1.321(c). The terminal disclaimer must state that any patent granted on the application being examined will be enforceable only for and during the period that it and the reference patent or any patent granted on the reference application are commonly owned. See MPEP § 2146.02 for examples of common ownership, or lack thereof. For terminal disclaimers, however, common ownership must be at the time of enforcement whereas the guidance in MPEP § 2146 et seq. requires determining ownership not later than the effective filing date of the claimed invention. See MPEP § 804.03.

A terminal disclaimer filed under 37 CFR 1.321(c) or (d) after the expiration of the reference patent is not effective to obviate a nonstatutory double patenting rejection. See Boehringer Ingelheim Int’l v. Barr Laboratories, 592 F.3d 1340, 93 USPQ2d 1417, 1422-23 (Fed. Cir. 2010) (The Federal Circuit found a terminal disclaimer filed in a patent to overcome double patenting based upon an expired parent patent was not effective. Specifically, the court stated: "By failing to terminally disclaim a later patent prior to the expiration of an earlier related patent, a patentee enjoys an unjustified advantage—a purported time extension of the right to exclude from the date of the expiration of the earlier patent. The patentee cannot undo this unjustified timewise extension by retroactively disclaiming the term of the later patent because it has already enjoyed rights that it seeks to disclaim. Permitting such a retroactive terminal disclaimer would be inconsistent with '[t]he fundamental reason' for obviousness-type double patenting, namely, 'to prevent unjustified timewise extension of the right to exclude.'" (quoting In re Van Ornum, 686 F.2d 937, 943-44, 214 USPQ 761, 766 (CCPA 1982) (emphasis removed))). In addition,“[a] patent owner cannot avoid double patenting by disclaiming the earlier patent.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 967 n.5, 58 USPQ2d 1869, 1878 n.5 (Fed. Cir. 2001).

A terminal disclaimer filed to obviate a nonstatutory double patenting rejection based on a non-commonly owned patent or application disqualified under 35 U.S.C. 102(b)(2)(C) or under pre-AIA 35 U.S.C. 103(c) as a result of activities undertaken within the scope of a joint research agreement under 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3) must comply with 37 CFR 1.321(d), which sets forth signature, waiver rights and enforceability requirements.

The terminal disclaimer under 37 CFR 1.321(d) must include a provision:

(1) waiving the right to separately enforce (a) any patent granted on that application or the patent being reexamined and (b) the reference patent, or any patent granted on the reference application which formed the basis for the double patenting; and
(2) agreeing that any patent granted on that application or patent being reexamined shall be enforceable only for and during such period that said patent and the reference patent, or any patent granted on the reference application, which formed the basis for the double patenting are not separately enforced.

Any terminal disclaimer submitted after the date of payment of the issue fee but prior to patent grant date requires the filing of a certificate of correction requesting that the face of the patent be amended to state that the patent is subject to a terminal disclaimer, unless the face of the patent already includes the language that the patent is subject to a terminal disclaimer.

The appropriate one of form paragraphs 14.27.04.fti to 14.27.08 (reproduced below) may be used to provide applicant or patent owner with an example of acceptable terminal disclaimer language. Additionally, copies of forms PTO/SB/25, PTO/SB/25a, PTO/SB/26, PTO/SB/26a, PTO/AIA/25, and PTO/AIA/26 (provided at the end of this Chapter) may be attached to the Office action to provide sample terminal disclaimers.

Pursuant to 35 U.S.C. 253(b), "any patentee or applicant may disclaim or dedicate to the public... any terminal part of the term, of the patent granted or to be granted." Accordingly, the disclaimer must be of a terminal portion of the term of the entire patent to be granted. A disclaimer of a terminal portion of the term of an individual claim, or individual claims will not be accepted. A disclaimer of the term of individual claims would not be appropriate because the claims of a pending application or proceeding are subject to cancellation, amendment, or renumbering. It is further noted that the statute does not provide for conditional disclaimers (whether they are terminal disclaimers or statutory disclaimers). Accordingly, a proposed disclaimer that is made contingent on any patent term adjustment determinations, outcomes of litigation, the allowance of certain claims, or the granting of a petition is improper and cannot be accepted. The disclaimer should identify the disclaimant and their interest in the application and should specify the date when the disclaimer is to become effective.

B. Effect of Terminal Disclaimers in Continuing Applications, Reexamination Proceedings, and Reissues

A terminal disclaimer filed to obviate a nonstatutory double patenting rejection is effective only with respect to the application or patent identified in the disclaimer unless by its terms it extends to continuing applications (in which case, applicant must file a copy of the disclaimer in the continuing application, to obviate any nonstatutory double patenting rejection to which the disclaimer is directed). See President and Fellows of Harvard College v. Rea, No. 1:12-CV-1034, 2013 WL 2152635 (E.D.Va. May 15, 2013). For example, a terminal disclaimer filed in a parent application normally has no effect on a continuing application claiming filing date benefits of the parent application under 35 U.S.C. 120. A terminal disclaimer filed in a parent application to obviate a nonstatutory double patenting rejection does, however, carry over to a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (effective July 14, 2003, CPAs are only available in design applications). The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed. If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182, along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA; see below “Withdrawing a Terminal Disclaimer” (paragraph “A. Before Issuance of Patent”). If applicant files a Request for Continued Examination (RCE) of an application under 37 CFR 1.114 (which can be filed on or after May 29, 2000 for an application filed on or after June 8, 1995), any terminal disclaimer present will continue to operate, because a new application has not been filed, but rather prosecution has been continued in the existing application. A petition under 37 CFR 1.182, along with the required petition fee, may be filed, if withdrawal of the terminal disclaimer is to be requested.

Reexamination proceedings: A reexamination is a proceeding in the issued patent. Therefore, if a terminal disclaimer was filed during prosecution of the application which resulted in the patent under reexamination, the terminal disclaimer will continue to operate.

Reissue applications: Where a terminal disclaimer was filed and approved in an original application, a copy of that terminal disclaimer is not required to be filed by applicant in the reissue application.

An internal review form will be filled out to indicate that a terminal disclaimer has been filed for the patent (and will be effective for the patent as it will be reissued). The internal review form will be added to the reissue application file prior to allowance. A copy of the terminal disclaimer will not be placed into the reissue application file history and the front page of the reissue patent, when issued, will not indicate that the patent is subject to a terminal disclaimer (except if a different terminal disclaimer is filed in the reissue application). However, as stated above, the terminal disclaimer will be effective for the reissue patent.

C. Terminal Disclaimer Identifies the Wrong Reference Application or Patent

In some instances a terminal disclaimer filed to obviate a nonstatutory double patenting rejection will identify the wrong reference application or patent (i.e., an application or patent which is not the basis for the double patenting rejection). In these instances, a replacement terminal disclaimer identifying the correct reference application or patent would be required by the examiner. Once a correct replacement terminal disclaimer is received, the next Office action should make it clear that "the second terminal disclaimer replaces the first terminal disclaimer, and the first terminal disclaimer is thus void." A second terminal disclaimer fee should not be assessed/charged, because the first fee is applied to the second terminal disclaimer.

D. Two or More Copending Applications

An examiner may become aware of two or more copending applications which share the same inventive entity, at least one common (joint) inventor, a common applicant, and/or a common owner/assignee, or that claim an invention resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3), that would raise an issue of double patenting if one of the applications became a patent. See MPEP § 804, subsection I.B.1 for making a provisional rejection on the ground of double patenting in such situations.

A provisional double patenting rejection should be made and maintained by the examiner until the rejection has been obviated or is no longer applicable except as noted below.

If two (or more) pending applications are filed, in each of which a rejection of one claimed invention over the other on the ground of provisional nonstatutory double patenting (NSDP) is proper, the provisional NSDP rejection will be made in each application. Where there are three applications containing claims that conflict such that a provisional NSDP rejection is made in each application based upon the other two, and it is necessary to file terminal disclaimers to overcome the rejections, it is not sufficient to file a terminal disclaimer in only one of the applications addressing the other two applications. Rather, an appropriate terminal disclaimer must be filed in at least two of the applications to require common ownership or enforcement for all three applications. A terminal disclaimer may be required in each of the three applications in certain situations. See subsections 1 to 3 below.

1. Patent Term Filing Date for Original Utility or Plant Applications

The doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a patent. For utility and plant patents issuing on applications filed on or after June 8, 1995, 35 U.S.C. 154(a)(2) provides that the patent term ends on the date that is twenty years from the date on which the application for the patent was filed in the United States, or if the application contains a specific reference to one or more earlier-filed application(s) under 35 U.S.C. 120, 121, 365(c), or 386(c), twenty years from the filing date of the earliest such application. For a patent that issues on an international (PCT) application that entered the national stage under 35 U.S.C. 371, the date that the application was filed in the United States is the international filing date; see MPEP § 2701, subsection II. Thus, where there are two or more applications with conflicting (i.e., patentably indistinct) claims, it may be necessary to determine the respective date from which the twenty year term is measured in view of 35 U.S.C. 154(a)(2) (hereinafter referred to as the “patent term filing date”) for each of the applications which could potentially issue as patents.

The patent term filing date of an original utility or plant application filed on or after June 8, 1995 is the earliest of:

(a) The actual filing date of the application; or
(b) The filing date of the earliest application for which the application claims the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78. See also MPEP § 211.

For example, if an original (non-reissue; see MPEP § 201.02) patent application has no specific reference to any earlier-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c), then the patent term filing date is the date that the application was actually filed. However, if an original patent application does include one or more specific references to an earlier-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c), then the patent term filing date is the filing date of the earliest reference application for which the benefit is properly claimed. See MPEP § 2701. For an application to properly claim the benefit of an earlier-filed application, it must meet the requirements of 37 CFR 1.78 (e.g., having a (joint) inventor in common, copendency, timeliness, and a proper reference). See 37 CFR 1.78 and MPEP § 211.01et seq. It does not require a determination that the earlier-filed application discloses the invention in a manner provided by 35 U.S.C. 112(a). In other words, the issue of entitlement of a claimed invention to the benefit of the filing date of an earlier-filed application does not affect the expiration date of a patent containing the claims, and therefore need not be considered when determining the patent term filing date for the purpose of a double patenting analysis.

The patent term filing date of a reissue application for purposes of nonstatutory double patenting analysis is the patent term filing date of the original application that resulted in the patent for which reissue is sought.

Benefit claims under 35 U.S.C. 119(e) and foreign priority claims under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) are not taken into account when determining the term of an issued patent (see 35 U.S.C. 154(a)(2) and (a)(3)), and therefore, are not taken into account in determining the patent term filing date of an application.

2. Provisional Nonstatutory Double Patenting Rejection is the Only Rejection Remaining in a Utility or Plant Application

Subsections (a)-(d) below discuss examination procedures when two or more utility or plant patent applications, filed on or after June 8, 1995, contain provisional nonstatutory double patenting rejections over each of the other application(s). The explanations refer to pairs of applications, but also apply when more than two applications are involved.

(a) Application under Examination Has Earlier Patent Term Filing Date

If a provisional nonstatutory double patenting rejection is the only rejection remaining in an application having the earlier patent term filing date, the examiner should withdraw the rejection in the application having the earlier patent term filing date and permit that application to issue as a patent, thereby converting the provisional nonstatutory double patenting rejection in the other application into a nonstatutory double patenting rejection upon issuance of the patent.

(b) Application under Examination Has the Same Patent Term Filing Date

If both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome. Provisional nonstatutory double patenting rejections are subject to the requirements of 37 CFR 1.111(b). Thus, applicant can overcome a provisional nonstatutory double patenting rejection by filing a reply that either shows that the claims subject to the rejection are patentably distinct from the claims of the reference application or includes a compliant terminal disclaimer in the application under 37 CFR 1.321 that obviates the rejection. If the reply is sufficient, the examiner will withdraw the nonstatutory double patenting rejection in the application in which it was submitted.

(c) Application under Examination Has Later Patent Term Filing Date

If a provisional nonstatutory double patenting rejection is the only rejection remaining in an application, and that application has the later patent term filing date, the rejection should be maintained until applicant overcomes the rejection. Replies to overcome the rejection are discussed in subsection (b) above.

(d) After Board Decision Not Reaching Provisional Nonstatutory Double Patenting Rejection

If a decision by the Patent Trial and Appeal Board does not include an opinion on a provisional nonstatutory double patenting rejection, and includes a reversal of all other grounds as to a claim rejected based on provisional nonstatutory double patenting, and the applicant has not filed a proper terminal disclaimer, the examiner must act upon the provisional nonstatutory double patenting rejection. The examiner must first determine if any reference application used in the provisional nonstatutory double patenting rejection has issued as a patent. If the reference application has issued, the provisional rejection should be re-issued as a nonprovisional rejection and a terminal disclaimer should be required, for example, by using form paragraphs 8.33-8.39 as appropriate. See MPEP § 804, subsection II.B. The rejection may be made final, if otherwise appropriate. If the reference application has been abandoned or, notwithstanding the discussion in paragraphs (b) and (c) above, where the reference application has not matured to a patent and the provisional double patenting rejection is the only remaining rejection in the application, the examiner should withdraw the provisional rejection. See MPEP § 1214.06.

3. Design Applications and Utility or Plant Applications Filed Prior to June 8, 1995

For design applications, patent term is measured from the issue date, and therefore, the determination of the patent term filing date is not necessary. If a provisional double patenting rejection (statutory or nonstatutory) is the only rejection remaining in the earlier filed of the two conflicting design applications, the examiner should withdraw that rejection and permit that application to issue as a patent. The examiner should maintain the provisional double patenting rejection in the later filed application and that rejection will be converted into a double patenting rejection when the allowed application issues as a patent unless the rejection has already been obviated. If both conflicting applications were filed on the same date, the provisional double patenting rejection made in each application should be maintained until it is overcome. See also MPEP § 804.03, subsection IV, to resolve issues in applications that name different inventors and claim indistinct inventions.

For double patenting analysis involving a utility or plant application filed prior to June 8, 1995, examiners should consult with their TQAS or SPE to determine if any of the provisional nonstatutory double patenting rejections should be withdrawn or not made. Likewise, for double patenting analysis for a utility or plant application and a reference design application or vice versa, examiners should consult with their TQAS or SPE to determine if any of the provisional nonstatutory double patenting rejections should be withdrawn or not made.

VII. FORM PARAGRAPHS

The following form paragraphs may be used to inform the applicant (or patent owner) of the status of a submitted terminal disclaimer.

¶ 14.23 Terminal Disclaimer Proper

The terminal disclaimer filed on [1] disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of [2] has been reviewed and is accepted. The terminal disclaimer has been recorded.

Examiner Note:

1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. See MPEP § 1490 for discussion of requirements for a proper terminal disclaimer.
4. Use form paragraph 14.23.01 for reexamination proceedings.
5. For improper terminal disclaimers, see form paragraphs 14.24et seq.

¶ 14.23.01 Terminal Disclaimer Proper (Reexamination Only)

The terminal disclaimer filed on [1] disclaiming the terminal portion of the patent being reexamined which would extend beyond the expiration date of [2] has been reviewed and is accepted. The terminal disclaimer has been recorded.

Examiner Note:

1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. See MPEP § 1490 for discussion of requirements for a proper terminal disclaimer.
4. For improper terminal disclaimers, see the form paragraphs which follow.

¶ 14.24 Terminal Disclaimer Not Proper - Introductory Paragraph

Examiner Note:

1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. One or more of the appropriate form paragraphs 14.26 to 14.32 MUST follow this form paragraph to indicate why the terminal disclaimer is not accepted.
4. Form paragraph 14.35 may be used to inform applicant that the previously submitted disclaimer fee will be applied when a replacement or supplemental terminal disclaimer is submitted.
5. Do not use in reexamination proceedings; use form paragraph 14.25 instead.

¶ 14.25 Terminal Disclaimer Not Proper - Introductory Paragraph (Reexamination Only)

Examiner Note:

1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or the Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. One or more of the appropriate form paragraphs 14.26 to 14.32 MUST follow this form paragraph to indicate why the terminal disclaimer is not accepted.
4. Form paragraph 14.35 may be used to inform applicant that the previously submitted disclaimer fee will be applied when a replacement or supplemental terminal disclaimer is submitted.

¶ 14.26 Does Not Comply With 37 CFR 1.321 “Sub-Heading” Only

The terminal disclaimer does not comply with 37 CFR 1.321 because:

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 and followed by one or more of the appropriate form paragraphs 14.26.01 to 14.27.03.

¶ 14.26.01 Extent of Interest Not Stated

The person who has signed the disclaimer has not stated the extent of the applicant's or assignee’s interest in the application/patent. See 37 CFR 1.321(b)(3).

Examiner Note:

This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.

¶ 14.26.02 Directed to Particular Claim(s)

It is directed to a particular claim or claims, which is not acceptable, since “the disclaimer must be of a terminal portion of the term of the entire [patent or] patent to be granted.” See MPEP § 1490.

Examiner Note:

This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.

¶ 14.26.03 Not Signed

The terminal disclaimer was not signed.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.

¶ 14.26.04 Application/Patent Not Identified

The application/patent being disclaimed has not been identified.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.

¶ 14.26.05 Application/Patent Improperly Identified

The application/patent being disclaimed has been improperly identified since the number used to identify the [1] being disclaimed is incorrect. The correct number is [2].

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. In bracket 1, insert --application-- or --patent--.
3. In bracket 2, insert the correct Application Number (including series code and serial no.) or the correct Patent Number being disclaimed.
4. A terminal disclaimer is acceptable if it includes the correct Patent Number or the correct Application Number or the serial number together with the proper filing date or the proper series code.

¶ 14.26.06.fti Not Signed by All Owners - Application Filed Before Sept. 16, 2012

This application was filed before September 16, 2012. The terminal disclaimer was not signed by all owners and, therefore, supplemental terminal disclaimers are required from the remaining owners.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed on or after September 16, 2012.

¶ 14.26.07 No Disclaimer Fee Submitted

The disclaimer fee of $ [1] in accordance with 37 CFR 1.20(d) has not been submitted, nor is there any authorization in the application file to charge a specified Deposit Account or credit card.

Examiner Note:

1. In bracket 1, insert the fee for a disclaimer.
2. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26. If the disclaimer fee was paid for a terminal disclaimer which was not accepted, the previously submitted disclaimer fee will be applied when a replacement or supplemental terminal disclaimer is submitted, and this form paragraph should not be used.

¶ 14.26.08 Terminal Disclaimer Not Properly Signed - Application Filed On or After Sept. 16, 2012

This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed before September 16, 2012.

¶ 14.26.09 Failure To State Capacity To Sign - Application Filed On or After Sept. 16, 2012

This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer has failed to state in what capacity it was signed on behalf of the juristic entity, and the person who signed it has not been established as being authorized to act on behalf of the juristic entity.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed before September 16, 2012.

¶ 14.26.10 Terminal Disclaimer Identifies Party Who Is Not The Applicant - Application Filed On or After Sept. 16, 2012

This application was filed on or after September 16, 2012. The party identified in the terminal disclaimer is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c).

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed before September 16, 2012.

¶ 14.27.01 Lacks Clause of Enforceable Only During Period of Common Ownership

It does not include a recitation that any patent granted shall be enforceable only for and during such period that said patent is commonly owned with the application(s) or patent(s) which formed the basis for the double patenting rejection. See 37 CFR 1.321(c)(3).

Examiner Note:

This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.

¶ 14.27.011 Lacks 37 CFR 1.321(d) Statement for Joint Research Agreement under 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2)&(3)

It does not include the waiver and enforceability provisions of 37 CFR 1.321(d). The terminal disclaimer must include a provision:

(1) waiving the right to separately enforce (a) any patent granted on that application or the patent being reexamined and (b) the reference patent, or any patent granted on the reference application which formed the basis for the double patenting rejection; and

(2) agreeing that any patent granted on that application or patent being reexamined shall be enforceable only for and during such period that said patent and the reference patent, or any patent granted on the reference application, which formed the basis for the double patenting are not separately enforced.

See 37 CFR 1.321(d)(3).

Examiner Note:

1. For applications filed before September 16, 2012, this form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26, and should be followed by either form paragraph 14.27.07.fti or form paragraph 14.27.08.
2. For applications filed on or after September 16, 2012, this form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26, and should be followed by either form paragraph 14.27.07.1 or form paragraph 14.27.08.

¶ 14.27.02 Fails To Disclaim Terminal Portion of Any Patent Granted On Subject Application

It fails to disclaim the terminal portion of any patent granted on the subject application.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Use this form paragraph when the period disclaimed is not the correct period or when no period is specified at all.
3. When using this form paragraph, give an example of proper terminal disclaimer language using form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) following this or the series of statements concerning the defective terminal disclaimer.

¶ 14.27.03 Fails To Disclaim Terminal Portion of Subject Patent

It fails to disclaim the terminal portion of the subject patent.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Use this form paragraph in a reissue application or reexamination proceeding when the period disclaimed is not the correct period or when no period is specified at all.

¶ 14.27.04.fti Examples of Acceptable Terminal Disclaimer Language in Patent To Be Granted -Application Filed Before Sept. 16, 2012

This application was filed before September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:

I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, use:

The owner, _________________, of _____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference application Number ________________, filed on _____________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and any patent granted on the reference application are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, use:

The owner, _________________, of _____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of patent No. ________________ (the "reference patent") as the term of said reference patent is presently shortened by any terminal disclaimer. The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and the reference patent are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.

Alternatively, Form PTO/SB/25 may be used for situation I, and Form PTO/SB/26 may be used for situation II. A copy of the forms may be found at the end of MPEP § 1490.

Examiner Note:

1. This form paragraph may be used in an application filed before September 16, 2012.
2. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation), other than for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.06.
3. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.fti for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

¶ 14.27.04.1 Examples of Acceptable Terminal Disclaimer Language in Patent To Be Granted – Application Filed On or After Sept. 16, 2012

This application was filed on or after September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:

I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, use:

The applicant, ________________, owner of ____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference application Number ______________, filed on ____________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The applicant hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and any patent granted on the reference application are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, use:

The applicant, ________________, owner of ____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of reference patent No. ________________ as the term of said reference patent is presently shortened by any terminal disclaimer. The applicant hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and the reference patent are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.

Alternatively, Form PTO/AIA/25 may be used for situation I, and Form PTO/AIA/26 may be used for situation II. A copy of the forms may be found at the end of MPEP § 1490.

Examiner Note:

1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation), other than for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.06.
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.1 for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

¶ 14.27.06 Examples of Acceptable Terminal Disclaimer Language in Patent (Reexamination Situation)

Examples of acceptable language for making the disclaimer of the terminal portion of the patent being reexamined (or otherwise for an existing patent) follow:

I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, or is otherwise believed to be applicable to the patent, use:

The patentee, ___________, owner of __________ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference application No. ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The patentee hereby agrees that the instant patent shall be enforceable only for and during such period that the instant patent and any patent granted on the reference application are commonly owned. This agreement is binding upon the patentee, its successors, or assigns.
II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, or is otherwise believed to be applicable to the instant patent, use:

The patentee, ___________, owner of ________ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of reference patent No. ______________ as the term of said reference patent is presently shortened by any terminal disclaimer. The patentee hereby agrees that the instant patent shall be enforceable only for and during such period that the instant patent and the reference patent are commonly owned. This agreement is binding upon the patentee, its successors, or assigns.

Alternatively, Form PTO/SB/25a may be used for situation I, and Form PTO/SB/26a may be used for situation II. A copy of the forms may be found at the end of MPEP § 1490.

Examiner Note:

1. To provide examples of acceptable terminal disclaimer language in a patent to be granted on an application (generally, an application being examined), other than for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012).
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.fti (for applications filed before September 16, 2012) or form paragraph 14.27.07.1 (for applications filed on or after September 16, 2012) for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

¶ 14.27.07.fti Examples of Acceptable Terminal Disclaimer Language – Application Filed Before Sept. 16, 2012, Activities Undertaken Within the Scope of a Joint Research Agreement

This application was filed before September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:

I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, use:

The owner, __________________, of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference application Number ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.

The owner of the instant application waives the right to separately enforce any patent granted on the instant application and any patent granted on the reference application. The owner of the instant application hereby agrees that any patent granted on the instant application shall be enforceable only for and during such period that any patent granted on the instant application and any patent granted on the reference application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the owner of the instant application, its successors, or assigns.
II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, use:

The owner, __________________, of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of reference patent No. _________________, as the term of said reference patent is presently shortened by any terminal disclaimer.

The owner of the instant application waives the right to separately enforce the reference patent and any patent granted on the instant application. The owner of the instant application hereby agrees that any patent granted on the instant application shall be enforceable only for and during such period that the reference patent and any patent granted on the instant application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the owner of the instant application, its successors, or assigns.

Examiner Note:

1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.08.
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

¶ 14.27.07.1 Examples of Acceptable Terminal Disclaimer Language – Application Filed On or After Sept. 16, 2012, Activities Undertaken Within the Scope of a Joint Research Agreement

This application was filed on or after September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:

I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, use:

The applicant, __________________, owner of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference application Number ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.

The applicant of the instant application waives the right to separately enforce any patent granted on the instant application and any patent granted on the reference application. The applicant of the instant application hereby agrees that any patent granted on the instant application shall be enforceable only for and during such period that any patent granted on the instant application and any patent granted on the reference application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the applicant of the instant application, its successors, or assigns.
II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, use:

The applicant, __________________, owner of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of reference patent No. _________________, as the term of said reference patent is presently shortened by any terminal disclaimer.

The applicant of the instant application waives the right to separately enforce the reference patent and any patent granted on the instant application. The applicant of the instant application hereby agrees that any patent granted on the instant application shall be enforceable only for and during such period that the reference patent and any patent granted on the instant application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the applicant of the instant application, its successors, or assigns.

Examiner Note:

1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.08.
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.04.1 for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

¶ 14.27.08 Examples of Acceptable Terminal Disclaimer Language in Patent (Reexamination Situation; activities undertaken within the scope of a joint research agreement)

Examples of acceptable language for making the disclaimer of the terminal portion of the patent being reexamined (or otherwise for an existing patent) follow:

I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, or is otherwise believed to be applicable to the patent, use:

The patentee, ______________, owner of _______ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.

The patentee waives the right to separately enforce the instant patent and any patent granted on the pending reference application. The patentee agrees that the instant patent shall be enforceable only for and during such period that the instant patent and the patent granted on the pending reference application are not separately enforced. The waiver and this agreement run with the instant patent and are binding upon the patentee, its successors, or assigns.
II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, or is otherwise believed to be applicable to the instant patent, use:

The patentee, owner of _______ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of reference patent No. _________________, as the term of said reference patent is presently shortened by any terminal disclaimer.

The patentee waives the right to separately enforce the instant patent and the reference patent. The patentee agrees that the instant patent shall be enforceable only for and during such period that the instant patent and the reference patent are not separately enforced. The waiver and this agreement run with the instant patent and are binding upon the patentee, its successors, or assigns.

Examiner Note:

1. To provide examples of acceptable terminal disclaimer language in a patent to be granted on an application (generally, an application being examined) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.07.fti (for applications filed before September 16, 2012) or form paragraph 14.27.07.1 (for applications filed on or after September 16, 2012).
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

¶ 14.28.fti Failure To State Capacity To Sign – Application Filed Before Sept. 16, 2012

This application was filed before September 16, 2012. The person who signed the terminal disclaimer has failed to state in what capacity it was signed on behalf of the corporation, or other business entity or organization, and the person who signed it has not been established as being authorized to act on behalf of the assignee.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed on or after September 16, 2012.

¶ 14.29.fti Not Recognized as Officer of Assignee – Application Filed Before Sept. 16, 2012, “Sub-Heading” Only

This application was filed before September 16, 2012. The person who signed the terminal disclaimer is not an attorney or agent of record, is not recognized as an officer of the assignee, and has not been established as being authorized to act on behalf of the assignee. See MPEP § 324.

Examiner Note:

1. This form paragraph is to be used ONLY in applications filed before September 16, 2012 when the person signing the terminal disclaimer is not an authorized officer as defined in MPEP § 324 or is an attorney or agent not of record (e.g., acting in a representative capacity under 37 CFR 1.34).
2. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 and followed by form paragraph 14.29.02.fti when appropriate. An attorney or agent of record is authorized to sign the terminal disclaimer, even though there is no indication that the attorney or agent is an officer of the assignee.
3. Use form paragraph 14.29.02.fti to explain how an official, other than a recognized officer, may properly sign a terminal disclaimer.

¶ 14.29.02.fti Criteria To Accept Terminal Disclaimer When Signed by a Non-Recognized Officer – Application Filed Before September 16, 2012

This application was filed before September 16, 2012. It would be acceptable for a person, other than a recognized officer, to sign a terminal disclaimer, provided the record for the application includes a statement that the person is empowered to sign terminal disclaimers and/or act on behalf of the assignee.

Accordingly, a new terminal disclaimer which includes the above empowerment statement will be considered to be signed by an appropriate official of the assignee. A separately filed paper referencing the previously filed terminal disclaimer and containing a proper empowerment statement would also be acceptable, if filed with another copy of the previously filed terminal disclaimer.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.29.fti.
2. When form paragraph 14.29.fti is used to indicate that a terminal disclaimer is denied because it was not signed by a recognized officer nor by an attorney or agent of record, this form paragraph should be used to point out one way to correct the problem.
3. While an indication of the person’s title is desirable, its inclusion is not mandatory when this option is employed.
4. A sample terminal disclaimer should be sent with the Office action.

¶ 14.30.fti No Evidence of Chain of Title to Assignee - Application Filed Before Sept. 16, 2012

This application was filed before September 16, 2012. The assignee has not established its ownership interest in the application, in order to support the terminal disclaimer. There is no submission in the record establishing the ownership interest by either (a) providing documentary evidence of a chain of title from the original inventor(s) to the assignee and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11, or (b) specifying (by reel and frame number) where such documentary evidence is recorded in the Office (37 CFR 3.73).

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25.
2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide a statement under 37 CFR 3.73. Thus, this form paragraph should not be used.
3. It should be noted that the documentary evidence or the specifying of reel and frame number may be found in the terminal disclaimer itself or in a separate paper.

¶ 14.30.01 No Evidence of Chain of Title to Assignee (Reexamination Situations)

The assignee has not established its ownership interest in the patent, in order to support the terminal disclaimer. There is no submission in the record establishing the ownership interest by either: (a) providing documentary evidence of a chain of title from the original inventor(s) to the assignee and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11; or (b) specifying (by reel and frame number) where such documentary evidence is recorded in the Office (37 CFR 3.73).

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25.
2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide a statement under 37 CFR 3.73. Thus, this form paragraph should not be used.
3. It should be noted that the documentary evidence or the specifying of reel and frame number may be found in the terminal disclaimer itself or in a separate paper in the application.

¶ 14.30.02.fti Evidence of Chain of Title to Assignee - Submission Not Signed by Appropriate Party – Application Filed Before Sept. 16, 2012, Terminal Disclaimer Is Thus Not Entered

This application was filed before September 16, 2012. The submission establishing the ownership interest of the assignee is informal. There is no indication of record that the party who signed the submission establishing the ownership interest is authorized to sign the submission (37 CFR 3.73).

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25.
2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide any statement under 37 CFR 3.73. Thus, this form paragraph should not be used.
3. This form paragraph should be followed by one of form paragraphs 14.16.02 or 14.16.03. In rare situations where BOTH form paragraphs 14.16.02 and 14.16.03 do not apply and thus cannot be used, the examiner should instead follow this form paragraph with a detailed statement of why there is no authorization to sign.
4. Use form paragraph 14.16.06 to point out one way to correct the problem.
5. Do not use this form paragraph in an application filed on or after September 16, 2012.

¶ 14.32 Application/Patent Which Forms Basis for Rejection Not Identified

The application/patent which forms the basis for the double patenting rejection is not identified in the terminal disclaimer.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25.
2. Use this form paragraph when no information is presented. If incorrect information is contained in the terminal disclaimer, use form paragraphs 14.26 and 14.26.05.

¶ 14.33 37 CFR 3.73 - Establishing Right of Assignee To Take Action

The following is a statement of 37 CFR 3.73 as applicable to applications filed on or after September 16, 2012:

37 CFR 3.73 Establishing right of assignee to take action.

(a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.

(b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:

(1) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or

(2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).

(c)

(1) In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting a signed statement identifying the assignee, accompanied by either:

(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or

(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).

(2) If the submission is by an assignee of less than the entire right, title and interest (e.g., more than one assignee exists) the Office may refuse to accept the submission as an establishment of ownership unless:

(i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or

(ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right, title and interest and stating that all the identified parties owns the entire right, title and interest.

(3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine while, if any, purported assignees will be permitted to control prosecution of the application.

(d) The submission establishing ownership under paragraph (b) or (c) of this section must show that the person signing the submission is a person authorized to act on behalf of the assignee by:

(1) Including a statement that the person is authorized to act on behalf of the assignee;

(2) Being signed by a person having apparent authority to sign on behalf of the assignee; or

(3) For patent matters only, being signed by a practitioner of record.

The following is a statement of pre-AIA 37 CFR 3.73 as applicable to applications filed before September 16, 2012:

Pre-AIA 37 CFR 3.73 Establishing right of assignee to take action.

(a) The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.

(b)

(1) In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:

(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For trademark matters only, the documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office. For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to § 3.11; or

(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).

(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:

(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or

(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.

(c) For patent matters only:

(1) Establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.

(2) If the submission under this section is by an assignee of less than the entire right, title and interest, such assignee must indicate the extent (by percentage) of its ownership interest, or the Office may refuse to accept the submission as an establishment of ownership.

¶ 14.34 Requirement for Statement To Record Assignment Submitted With Terminal Disclaimer

The assignment document filed on [1] is not acceptable as the documentary evidence required by 37 CFR 3.73. The submission of the documentary evidence was not accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11. See 37 CFR 3.11 and MPEP § 302.

Examiner Note:

1. In bracket 1, insert the date the assignment document was filed.
2. This form paragraph should be used when an assignment document (an original, facsimile, or copy) is submitted to satisfy 37 CFR 3.73 was not accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation, and the documentary evidence has not been recorded among the assignment records of the Office.

¶ 14.35 Previously Submitted Disclaimer Fee Can Be Applied - Applicant

The previously paid disclaimer fee as set forth in 37 CFR 1.20(d) can be applied when submitting a replacement or supplemental terminal disclaimer. If, however, the disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid, then applicant must pay the difference between the increased fee and the amount previously paid.

Examiner Note:

1. This form paragraph can be used to notify an applicant that the previously submitted disclaimer fee can be applied when a replacement or supplemental terminal disclaimer is submitted.
2. Use form paragraph 14.35.01 for providing notification to patent owner, rather than an applicant.

¶ 14.35.01 Previously Submitted Disclaimer Fee Can Be Applied - Patent Owner

The previously submitted disclaimer fee as set forth in 37 CFR 1.20(d) can be applied when submitting a replacement or supplemental terminal disclaimer. If, however, the disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid, then patent owner must pay the difference between the increased fee and the amount previously paid.

Examiner Note:

This form paragraph can be used to notify a patent owner that the previously submitted disclaimer fee can be applied when a replacement or supplemental terminal disclaimer is submitted.

¶ 14.36 Suggestion That “Applicant” Request a Refund

The fee for the terminal disclaimer that was previously submitted has been applied to the filing of the replacement or supplemental terminal disclaimer. If the disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid, then applicant must pay the difference between the increased fee and the amount previously paid. Therefore, applicant's payment of another terminal disclaimer fee under 37 CFR 1.20(d) is not required or is not required for the full amount. Applicant may request a refund of any payment more than the terminal disclaimer fee required when the replacement or supplemental terminal disclaimer was filed by submitting a written request for a refund and a copy of this Office action to: Mail Stop 16, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Examiner Note:

1. This form paragraph should be used to notify applicant that a refund can be obtained if another terminal disclaimer fee was paid when a replacement or supplemental terminal disclaimer was submitted and the previously paid disclaimer fee was applied.
2. Note - If applicant has authorized or requested a fee refund to be credited to a specific Deposit Account or credit card, then an appropriate credit should be made to that Deposit Account or credit card and this paragraph should NOT be used.
3. Use form paragraph 14.36.01 for providing notification to patent owner, rather than an applicant.

¶ 14.36.01 Suggestion That “Patent Owner” Request a Refund

The fee for the terminal disclaimer that was previously submitted has been applied to the filing of the replacement or supplemental terminal disclaimer. If the disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid, then patent owner must pay the difference between the increased fee and the amount previously paid. Therefore, patent owner's payment of another terminal disclaimer fee under 37 CFR 1.20(d) is not required or is not required for the full amount. Patent owner may request a refund of any payment more than the terminal disclaimer fee required when the replacement or supplemental terminal disclaimer was filed by submitting a written request for a refund and a copy of this Office action to: Mail Stop 16, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Examiner Note:

1. This form paragraph should be used to notify patent owner that a refund can be obtained if another terminal disclaimer fee was paid when a replacement or supplemental terminal disclaimer was submitted and the previously paid disclaimer fee was applied.
2. Note - If patent owner has authorized or requested a fee refund to be credited to a specific Deposit Account or credit card, then an appropriate credit should be made to that Deposit Account or credit card and this form paragraph should NOT be used.

¶ 14.37 Information about a Terminal Disclaimer Over a Pending Application

A terminal disclaimer may be effective to overcome a provisional nonstatutory double patenting rejection over a pending application (37 CFR 1.321(b) and (c)). A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).

The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional, the reply must be complete. MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.

The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/PatentForms. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/TerminalDisclaimer.

Examiner Note:

This form paragraph can be used to provide applicant information regarding the terminal disclaimer forms available on the USPTO website that may be used to overcome a provisional nonstatutory double patenting rejection over a pending application.

¶ 14.38 Information about a Terminal Disclaimer Over a Reference Patent

A terminal disclaimer may be effective to overcome a nonstatutory double patenting rejection over a reference patent (37 CFR 1.321(b) and (c)). A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).

Examiner Note:

This form paragraph can be used to provide applicant information regarding the terminal disclaimer forms available on the USPTO website that may be used to overcome a nonstatutory double patenting rejection over a reference patent.

VIII. WITHDRAWING A RECORDED TERMINAL DISCLAIMER

A recorded terminal disclaimer may be withdrawn if a petition under 37 CFR 1.182 is granted before the application in which it is filed issues as a patent, or if a terminal disclaimer is filed in a reexamination proceeding, before the reexamination certificate issues. After a patent or reexamination certificate issues, a recorded terminal disclaimer will not be nullified.

A. Before Issuance of Patent or Reexamination Certificate

While the filing and recordation of an unnecessary terminal disclaimer has been characterized as an “unhappy circumstance” in In re Jentoft, 392 F.2d 633, 157 USPQ 363 (CCPA 1968), there is no statutory prohibition against nullifying or otherwise canceling the effect of a recorded terminal disclaimer which was erroneously filed before the patent issues. Likewise, a terminal disclaimer that was erroneously filed in a reexamination proceeding may be withdrawn before issuance of the reexamination certificate. Because the terminal disclaimer would not take effect until the patent is granted (or the reexamination certificate is published), and the public has not had the opportunity to rely on the terminal disclaimer, relief from this unhappy circumstance may be available by way of petition or by refiling the application (other than by refiling it as a CPA).

Under appropriate circumstances, consistent with the orderly administration of the examination process, the nullification of an erroneously filed recorded terminal disclaimer may be addressed by filing a petition under 37 CFR 1.182 requesting withdrawal of the recorded terminal disclaimer. Petitions seeking to reopen the question of the propriety of the double patenting rejection that prompted the filing of the terminal disclaimer have not been favorably considered. The filing of a continuing application other than a CPA, while abandoning the application in which the terminal disclaimer has been filed, will typically nullify the effect of a terminal disclaimer. The filing of a Request for Continued Examination (RCE) of an application under 37 CFR 1.114 will not nullify the effect of a terminal disclaimer, because a new application has not been filed, but rather prosecution has been continued in the existing application.

B. After Issuance of Patent or Reexamination Certificate

The mechanisms to correct a patent — certificate of correction (35 U.S.C. 255), reissue (35 U.S.C. 251), reexamination (35 U.S.C. 305 and pre-AIA 35 U.S.C. 314), inter partes review (35 U.S.C. 316), post grant review (35 U.S.C. 326), and covered business method review — are not available to withdraw or otherwise nullify the effect of a recorded terminal disclaimer. As a general principle, public policy does not favor the restoration to the patent owner of something that has been freely dedicated to the public, particularly where the public interest is not protected in some manner — e.g., intervening rights in the case of a reissue patent. See, e.g., Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 24 USPQ 308 (1935).

Although certificates of correction (35 U.S.C. 255) are available for the correction of some mistakes by applicants, this remedial provision is not available to withdraw or otherwise nullify a recorded terminal disclaimer. The scope of this remedial provision is limited in two ways — by the nature of the mistake for which correction is sought and the nature of the proposed correction. In re Arnott, 19 USPQ2d 1049 (Comm’r Pat. 1991). The nature of the mistake for which correction is sought is limited to those mistakes that are:

(A) of a clerical nature;
(B) of a typographical nature; or
(C) of a minor character.

The nature of the proposed correction is limited to those situations where the correction does not involve changes which would:

(A) constitute new matter, or
(B) require reexamination.

A mistake in filing a terminal disclaimer does not fall within any of the categories of mistake for which a certificate of correction of applicant’s mistake is permissible.

Although the remedial nature of reissue (35 U.S.C. 251) is well recognized, reissue is not available to correct all errors. Reissue is not available to withdraw or otherwise nullify the effect of a terminal disclaimer recorded in an issued patent. First, the reissue statute only authorizes the Director of the USPTO to reissue a patent “for the unexpired part of the term of the original patent.” Because the granting of a reissue patent without the effect of a recorded terminal disclaimer would result in extending the term of the original patent, reissue under these circumstances would be contrary to the statute. In In re Yamazaki, 702 F.3d 1327, 1332, 104 USPQ2d 2024, 2028 (Fed. Cir. 2012), the Federal Circuit stated, as to a terminal disclaimer submitted for a patent, that the statutory patent term calculation begins but does not end with 35 U.S.C. 154(a). When a patent issues subject to a terminal disclaimer, the patentee has reduced the patent’s statutory term by effectively eliminating the disclaimed portion from the original patent, by operation of 35 U.S.C. 253 (which indicates that a disclaimer of patent claims “shall thereafter be considered as part of the original patent” and such applies to disclaimers of patent term). Id.

Second, the principle against recapturing previously patented subject matter that has been intentionally dedicated to the public dates back to Leggett v. Avery, 101 U.S. 256 (1879). The attempt to restore that portion of the patent term that was dedicated to the public to secure the grant of the original patent would be contrary to this recapture principle. Finally, applicants have the opportunity to challenge the need for a terminal disclaimer during the prosecution of the application that issues as a patent. “Reissue is not a substitute for Patent Office appeal procedures.” Ball Corp. v. United States, 729 F.2d 1429, 1435, 221 USPQ 289, 293 (Fed. Cir. 1984). Where applicants did not challenge the propriety of the examiner’s nonstatutory double patenting rejection, but filed a terminal disclaimer to avoid the rejection, the filing of the terminal disclaimer did not constitute error within the meaning of 35 U.S.C. 251. Ex parte Anthony, 230 USPQ 467 (Bd. App. 1982), aff’d, No. 84-1357 (Fed. Cir. June 14, 1985). In In re Dinsmore, 757 F.3d 1343, 111 USPQ2d 1229 (Fed. Cir. 2014), the Federal Circuit held that the filing of a terminal disclaimer to obviate a double patenting rejection over a prior patent, when the prior patent and the patent sought to be reissued were never commonly owned, was not an error within the meaning of the reissue statute. In rejecting applicants' argument, the Dinsmore court noted that applicants had not shown a mistaken belief that the two patents at issue were commonly owned, and stated that the applicants were ultimately seeking to revise a choice they made, not to remedy the result of a mistaken belief.

Finally, the nullification of a recorded terminal disclaimer would not be appropriate in reexamination, inter partes review, post grant review, and covered business method review proceedings. There are statutory prohibitions in 35 U.S.C. 305 and pre-AIA 35 U.S.C. 314, 35 U.S.C. 316, and 35 U.S.C. 326 against enlarging the scope of a claim during reexamination, inter partes review, post grant review, and covered business method review proceedings. As noted by the Board in Anthony,supra, if a terminal disclaimer was nullified, “claims would be able to be sued upon for a longer period than would the claims of the original patent. Therefore, the vertical scope, as opposed to the horizontal scope (where the subject matter is enlarged), would be enlarged.” Id. at 470.

Accordingly, after issuance of a patent, a request to replace or remove a previously recorded terminal disclaimer will not be addressed on the merits. Where a terminal disclaimer was submitted to overcome a nonstatutory double patenting rejection (made during prosecution of an application which has now issued as a patent), and one or more patent or application numbers for the patent(s) or application(s) being disclaimed in the terminal disclaimer were in error, the patent owner may file a paper explaining the error(s) and requesting that the explanation be included in the file history and its request acknowledged. A patent owner may file additional terminal disclaimer(s) disclaiming the correct patent(s) or application(s) accompanied by the fee for such disclaimer(s) for processing by the Office. See subsection IV above. Similarly, if a terminal disclaimer has an error in the naming of the patent owner(s) or applicant, the patent owner may file a paper explaining the error(s) and requesting that the explanation be included in the file history. The patent owner can also request acknowledgement of the paper. A patent owner may also file additional terminal disclaimer(s) naming the correct owner(s) or applicant(s), accompanied by the fee for such disclaimer(s), for processing by the Office.

IX. TERMINAL DISCLAIMER FORMS

The following are forms which may be used when filing a terminal disclaimer.

Forms PTO/AIA/25 and PTO/AIA/26 may be used when filing a terminal disclaimer in an application where the application in which the terminal disclaimer is submitted was filed on or after September 16, 2012. Forms PTO/SB/25 and PTO/SB/26 may be used when filing a terminal disclaimer in an application where the application in which the terminal disclaimer is submitted was filed before September 16, 2012.

Forms PTO/SB/25a and PTO/SB/26a may be used when filing a terminal disclaimer in a patent.

PTO/AIA/26 TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTING REJECTION OVER A "PRIOR" PATENT

AIA Terminal Disclaimer Double Patenting Page 2

SB Terminal Disclaimer Double Patenting Page 1

SB Terminal Disclaimer Prior Double Patenting Rejection Page 1

SB Terminal Disclaimer Prior Double Patenting Rejection Page 2

PTO/SB/25a TERMINAL DISCLAIMER IN A PATENT OR PROCEEDING IN VIEW OF AN APPLICATION

PTO/SB/26a TERMINAL DISCLAIMER IN A PATENT OR PROCEEDING IN VIEW OF ANOTHER PATENT

[top]

This page is owned by Patents.

Last Modified: 10/30/2024 08:50:22