¶ 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 obviousness-type double patenting rejection over a Pending Application was made, or is otherwise believed to be applicable to the patent, use:
The patent owner hereby disclaims the terminal part of the instant patent, which would extend beyond the expiration date of the full statutory term of any patent granted on pending Application Number ______________, filed on ______________, as such term is defined in 35 U.S.C. 154 and 173, and as the term of any patent granted on said application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending application.
The patent owner waives the right to separately enforce the instant patent and the above-listed pending application. The patent owner agrees that the instant patent and any patent granted on the above-listed pending application shall be enforceable only for and during such period that the instant patent and the patent granted on the above-listed pending application are not separately enforced. The waiver, and this agreement, run with any patent granted on the above-listed pending application, and are binding upon the patent owner, its successors, or assigns.
Patent Owner, or attorney/agent of record:
Signature:_________________________
Printed/Typed name:________________
II. If an obviousness-type double patenting rejection over a Reference Patent was made, or is otherwise believed to be applicable to the patent, use:
The patent owner hereby disclaims the terminal part 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 defined in 35 U.S.C. 154 and 173, and as the term of said reference patent is presently shortened by any terminal disclaimer.
The patent owner waives the right to separately enforce the instant patent and the reference patent. The patent owner agrees that the instant patent and the reference 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, are binding upon the patent owner, its successors, or assigns.
Patent Owner, or attorney/agent of record:
Signature:_________________________
Printed/Typed name:________________
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.
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 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).