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Re required to respond to a collection of information unless it displays a valid OMB control number. TERMINAL DISCLAIMER TO OBVIATE A PROVISIONAL DOUBLE PATENTING REJECTION OVER A PENDING REFERENCE APPLICATION Docket Number (Optional) In re Application of: Application No.: Filed: For: The owner*, , of percent interest in the instant application hereby disclaims, except as provided below, the terminal part of the statutory term of any pate.

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A terminal disclaimer is a statement in which the patent applicant dedicates the ending part of the patent to the public so that all similar patents end on the same date. Put simply, the term of all patents which are similar to each other owned by the patent owner is coterminous.

What is Terminal Disclaimer? A terminal disclaimer is a conclusive statement filed by the inventor(s) during prosecution whereby the inventor disclaims the term of enforceability of the later-filed patent additional term of enforceability (beyond the term of the earlier-filed patent) for the later-filed patent.

§1.321(c), a terminal disclaimer based on common ownership must include a provision that any patent granted on the application rejected for double-patenting shall be enforceable only during a period that the patent is commonly owned with the patent that forms the basis for the double patenting rejection.

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).

A terminal disclaimer may be withdrawn before issuance of the patent by filing a petition under 37 C.F.R. § 1.182 requesting withdrawal of the recorded terminal disclaimer. However, a terminal disclaimer may not be withdrawn after issuance of the patent.

A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope.

The second way to overcome a double patenting rejection is to file a terminal disclaimer. A terminal disclaimer essentially states that the later patent application will expire at the same time as the earlier patent and that the later patent application will only be enforceable if they are commonly owned.

Double patenting may exist where a reference patent or application and the patent under reexamination share the same inventive entity, at least one common (joint) inventor, a common applicant, and/or a common owner/assignee.

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© Copyright 1997-2025
airSlate Legal Forms, Inc.
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Form Packages
Adoption
Bankruptcy
Contractors
Divorce
Home Sales
Employment
Identity Theft
Incorporation
Landlord Tenant
Living Trust
Name Change
Personal Planning
Small Business
Wills & Estates
Packages A-Z
Form Categories
Affidavits
Bankruptcy
Bill of Sale
Corporate - LLC
Divorce
Employment
Identity Theft
Internet Technology
Landlord Tenant
Living Wills
Name Change
Power of Attorney
Real Estate
Small Estates
Wills
All Forms
Forms A-Z
Form Library
Customer Service
Terms of Service
DMCA Policy
About Us
Blog
Affiliates
Contact Us
Privacy Notice
Delete My Account
Site Map
All Forms
Search all Forms
Industries
Forms in Spanish
Localized Forms
Legal Guides
Real Estate Handbook
All Guides
Prepared for You
Notarize
Incorporation services
Our Customers
For Consumers
For Small Business
For Attorneys
Our Sites
US Legal Forms
USLegal
FormsPass
pdfFiller
signNow
airSlate workflows
DocHub
Instapage
Social Media
Call us now toll free:
1-877-389-0141
As seen in:
  • USA Today logo picture
  • CBC News logo picture
  • LA Times logo picture
  • The Washington Post logo picture
  • AP logo picture
  • Forbes logo picture
© Copyright 1997-2025
airSlate Legal Forms, Inc.
3720 Flowood Dr, Flowood, Mississippi 39232