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¶ 14.01 Reissue Application, Applicable Laws and Rules Heading

For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are "pre-AIA" provisions.

For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.

Examiner Note:

This paragraph should be used as a heading in all Office actions in reissue applications.

¶ 14.01.01 Defective Reissue Oath/Declaration, 37 CFR 1.175 - No Statement of a Specific Error

The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.

Examiner Note:

1. Use this form paragraph when the reissue oath or declaration does not contain any statement of an error which is relied upon to support the reissue application.

2. This form paragraph can be used where the reissue oath or declaration does not even mention error. It can also be used where the reissue oath or declaration contains some discussion of the concept of error but never in fact identifies a specific error to be relied upon. For example, it is not sufficient for an oath or declaration to merely state "this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure."

3. Form paragraph 14.14 must follow this form paragraph.

¶ 14.01.02 Defective Reissue Oath/Declaration, 37 CFR 1.175 - The Identified "Error" Is Not Appropriate Error

The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.

Examiner Note:

1. Use this form paragraph when the reissue oath/declaration identifies only one error which is relied upon to support the reissue application, and that one error is not an appropriate error upon which a reissue can be based.

2. Form paragraph 14.14 must follow this form paragraph.

¶ 14.01.03 Defective Reissue Oath/Declaration, 37 CFR 1.175 - Multiple Identified "Errors" Not Appropriate Errors

The reissue oath/declaration filed with this application is defective because none of the errors which are relied upon to support the reissue application are errors upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.

Examiner Note:

1. Use this form paragraph when the reissue oath/declaration identifies more than one error relied upon to support the reissue application, and none of the errors are appropriate errors upon which a reissue can be based.

2. Note that if the reissue oath/declaration identifies more than one error relied upon, and at least one of the errors is an error upon which reissue can be based, this form paragraph should not be used, despite the additional reliance by applicant on "errors" which do not support the reissue. Only one appropriate error is needed to support a reissue.

3. Form paragraph 14.14 must follow this form paragraph.

¶ 14.01.04.fti Defective Reissue Oath/Declaration in Application Filed Before Sept. 16, 2012, 37 CFR 1.175- Lack of Statement of "Without Any Deceptive Intention"

The reissue oath/declaration filed with this application, which has a filing date before September 16, 2012, is defective because it fails to contain a statement that all errors which are being corrected in the reissue application up to the time of filing of the oath/declaration arose without any deceptive intention on the part of the applicant. See pre-AIA 37 CFR 1.175 and MPEP § 1414.

Examiner Note:

1. For reissue applications filed before September 16, 2012, use this form paragraph when the reissue oath/declaration does not contain the statement required by pre-AIA 37 CFR 1.175 that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant.

2. This form paragraph is appropriate to use for a failure by applicant to comply with the requirement, as to any of pre-AIA 37 CFR 1.175(a)(2), 37 CFR 1.175(b)(1), or 37 CFR 1.175(b)(2).

3. Form paragraph 14.14 must follow.

¶ 14.01.05 Defective Reissue Oath/Declaration, 37 CFR 1.175 - No Statement of Defect in the Patent

The reissue oath/declaration filed with this application is defective because it fails to contain the statement(s) required under 37 CFR 1.175 as to applicant’s belief that the original patent is wholly or partly inoperative or invalid. [1]

Examiner Note:

1. Use this form paragraph when applicant: (a) fails to allege that the original patent is inoperative or invalid and/or (b) fails to state the reason of a defective specification or drawing, or of patentee claiming more or less than patentee had the right to claim in the patent. In bracket 1, point out the specific defect to applicant by using the language of (a) and/or (b), as it is appropriate.

2. Form paragraph 14.14 must follow this form paragraph.

¶ 14.01.06 Defective Reissue Oath/Declaration, 37 CFR 1.175 - General

The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:

Examiner Note:

1. Use this form paragraph when the reissue oath/declaration does not comply with 37 CFR 1.175, and none of form paragraphs 14.01.01 - 14.01.05 or 14.05.02.fti apply.

2. This form paragraph must be followed by an explanation of why the reissue oath/declaration is defective.

3. Form paragraph 14.14 must follow the explanation of the defect.

¶ 14.05.02.fti Supplemental Oath or Declaration Required Prior to Allowance - Application Filed Before Sept. 16, 2012

In accordance with pre-AIA 37 CFR 1.175(b)(1), for applications filed before September 16, 2012, a supplemental reissue oath/declaration must be received before this reissue application can be allowed.

Claim [1] rejected as being based upon a defective reissue [2] under 35 U.S.C. 251. See 37 CFR 1.175. The nature of the defect is set forth above.

Receipt of an appropriate supplemental oath/declaration will overcome this rejection. An example of acceptable language to be used in the supplemental oath/declaration is as follows:

"Every error in the patent which was corrected in the present reissue application, and is not covered by a prior oath/declaration submitted in this application, arose without any deceptive intention on the part of the applicant."

See MPEP § 1414.01.

Examiner Note:

1. In bracket 1, list all claims in the reissue application.

2. In bracket 2, insert either --oath-- or --declaration--.

3. This form paragraph is used in an Office action to: (a) remind applicant of the requirement for submission of the supplemental reissue oath/declaration under pre-AIA 37 CFR 1.175(b)(1) before allowance and (b) at the same time, reject all the claims since the reissue application is defective until the supplemental oath/declaration is submitted.

4. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.

5. Do not use this form paragraph if no amendments (or other corrections of the patent) have been made subsequent to the last oath/declaration filed in the case; instead allow the case.

6. This form paragraph cannot be used in an Ex parte Quayle action to require the supplemental oath/declaration, because the rejection under 35 U.S.C. 251 is more than a matter of form.

7. Do not use this form paragraph in an examiner’s amendment. The supplemental oath/declaration must be filed prior to mailing of the Notice of Allowability.

¶ 14.06 Litigation-Related Reissue

The patent sought to be reissued by this application [1] involved in litigation. Any documents and/or materials which would be material to patentability of this reissue application are required to be made of record in response to this action.

Due to the related litigation status of this application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED DURING THE PROSECUTION OF THIS APPLICATION.

Examiner Note:

In bracket 1, insert either —is— or —has been—.

¶ 14.07 Action in Reissue Not Stayed or Suspended — Related Litigation Stayed

While there is a stay of the concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed or suspended because a stay of that litigation is in effect for the purpose of awaiting the outcome of these reissue proceedings. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.

¶ 14.08 Action in Reissue Not Stayed — Related Litigation Terminated

Since the litigation related to this reissue application is terminated and final, action in this reissue application will NOT be stayed. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.

¶ 14.09 Action in Reissue Not Stayed — Related Litigation Not Overlapping

While there is concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed because there are no significant overlapping issues between the application and that litigation. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.

¶ 14.10 Action in Reissue Not Stayed — Applicant’s Request

While there is concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed because of applicant’s request that the application be examined at this time. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.

¶ 14.11 Action in Reissue Stayed - Related Litigation

In view of concurrent litigation, and in order to avoid duplication of effort between the two proceedings, action in this reissue application is STAYED until such time as it is evident to the examiner that (1) a stay of the litigation is in effect, (2) the litigation has been terminated, (3) there are no significant overlapping issues between the application and the litigation, or (4) applicant requests that the application be examined.

¶ 14.11.01 Reminder of Duties Imposed by 37 CFR 1.178(b) and 37 CFR 1.56

Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. [1] is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.

Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.

These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.

Examiner Note:

1. This form paragraph is to be used in the first action in a reissue application.

2. In bracket 1, insert the patent number of the original patent for which reissue is requested.

¶ 14.12 Rejection, 35 U.S.C. 251, Broadened Claims After Two Years

Claim [1] rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. [2] A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.

Examiner Note:

The claim limitations that broaden the scope should be identified and explained in bracket 2. See MPEP §§ 706.03(x) and 1412.03.

¶ 14.13 Rejection, 35 U.S.C. 251, Broadened Claims Filed by Assignee

Claim [1] rejected under 35 U.S.C. 251 as being improperly broadened in a reissue application made and sworn to by the assignee. The application for reissue may be made and sworn to by the assignee of the entire interest only if the application does not seek to enlarge the scope of the claims of the original patent or, for reissue applications filed on or after September 16, 2012, the application for the original patent was filed by the assignee of the entire interest under 37 CFR 1.46.

[2] A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.

Examiner Note:

The claim limitations that broaden the scope should be identified and explained in bracket 2. See MPEP §§ 706.03(x) and 1412.03.

¶ 14.14 Rejection, Defective Reissue Oath or Declaration

Claim [1] rejected as being based upon a defective reissue [2] under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.

The nature of the defect(s) in the [3] is set forth in the discussion above in this Office action.

Examiner Note:

1. In bracket 1, list all claims in the reissue application. See MPEP § 706.03(x).

2. This paragraph must be preceded by form paragraph 14.01 and should be preceded by form paragraphs 14.01.01 to 14.01.06 as appropriate

3. In brackets 2 and 3, insert either --oath-- or --declaration--.

¶ 14.15 Consent of Assignee to Reissue Lacking

This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.

A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.

Examiner Note:

1. This form paragraph may be used in an Office action which rejects any of the claims on other grounds.

2. If a consent document/statement has been submitted but is insufficient (e.g., not by all the assignees) or is otherwise ineffective (e.g., a conditional consent, or a copy of the consent from the parent reissue application was filed in this continuation reissue application and the parent reissue application is not being abandoned), an explanation of such is to be included following this form paragraph.

3. If the case is otherwise ready for allowance, this form paragraph should be followed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 of form paragraph 7.51).

¶ 14.16 Failure of Assignee To Establish Ownership

(a) filing in the reissue application evidence of a chain of title from the original owner to the assignee, or

(b) specifying in the record of the reissue application where such evidence is recorded in the Office (e.g., reel and frame number, etc.).

The submission with respect to (a) and (b) to establish ownership must be signed by a party authorized to act on behalf of the assignee. See MPEP § 1410.01.

An appropriate paper satisfying the requirements of 37 CFR 3.73 must be submitted in reply to this Office action.

Examiner Note:

1. This form paragraph may be used in an Office action which rejects any of the claims on other grounds.

2. If otherwise ready for allowance, this form paragraph should be followed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 of form paragraph 7.51).

¶ 14.16.01 Establishment of Ownership Not Signed by Appropriate Party

This application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested. An assignee must establish its ownership interest in order to support the consent to a reissue application required by 37 CFR 1.172(a). The submission establishing the ownership interest of the assignee is informal. There is no indication of record that the party who signed the submission is an appropriate party to sign on behalf of the assignee. See 37 CFR 3.73.

A proper submission establishing ownership interest in the patent, pursuant to 37 CFR 1.172(a), is required in response to this action.

Examiner Note:

1. This form paragraph should be followed: by one of form paragraphs 14.16.02 through 14.16.04.fti, and then optionally by form paragraph 14.16.06.

2. See MPEP § 1410.02.

¶ 14.16.02 Failure To State Capacity To Sign

The person who signed the submission establishing ownership interest has failed to state in what capacity the submission on behalf of the corporation or other business entity was signed, and the person who signed it has not been established as being authorized to act on behalf of the assignee. For reissue applications filed on or after September 16, 2012, the submission establishing ownership may be signed by a patent practitioner of record. See 37 CFR 3.73; MPEP § 325.

Examiner Note:

1. This form paragraph is to be used when the person signing the submission establishing ownership interest does not state the person's capacity (e.g., as a recognized officer) to sign for the assignee, and is not established as being authorized to act on behalf of the assignee. For reissue applications filed on or after September 16, 2012, the submission establishing ownership may be signed by a patent practitioner of record (i.e., who has been given power in a power of attorney document in the file).

2. Use form paragraph 14.16.06 to explain how an official, other than a recognized officer, may properly sign a submission establishing ownership interest.

¶ 14.16.03 Lack of Capacity To Sign

The person who signed the submission establishing ownership interest is not recognized as an officer of the assignee, and the person who signed it has not been established as being authorized to act on behalf of the assignee. See MPEP § 324 (for applications filed before September 16, 2012) and § 325 (for applications filed on or after September 16, 2012).

¶ 14.16.04.fti Attorney/Agent of Record Signs - Application Filed Before Sept. 16, 2012

The submission establishing ownership interest was signed by applicant’s [1]. For reissue applications filed before September 16, 2012, an attorney or agent of record is not authorized to sign a submission establishing ownership interest, unless the attorney or agent has 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 in reissue applications filed before September 16, 2012, when the person signing the submission establishing ownership interest is an attorney or agent of record who is not an authorized officer as defined in MPEP § 324 and has not been established as being authorized to act on behalf of the assignee. For reissue applications filed on or after September 16, 2012, the submission may be signed by a patent practitioner of record. See 37 CFR 3.73(d)(3).

2. Use form paragraph 14.16.06 to explain how an official, other than a recognized officer, may properly sign a submission establishing ownership interest.

3. In bracket 1, insert either --attorney-- or --agent--.

¶ 14.16.06 Criteria To Accept When Signed by a Non-Recognized Officer

It would be acceptable for a person, other than a recognized officer, to sign a submission establishing ownership interest, provided the record for the application includes a duly signed statement that the person is empowered to sign a submission establishing ownership interest and/or act on behalf of the assignee.

Accordingly, a new submission establishing ownership interest which includes such a statement above, will be considered to be signed by an appropriate official of the assignee. A separately filed paper referencing the previously filed submission establishing ownership interest and containing a proper empowerment statement would also be acceptable.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.16.02, 14.16.03 or 14.16.04.fti.

2. When one of form paragraphs 14.16.02, 14.16.03 or 14.16.04.fti is used to indicate that a submission establishing ownership interest is not proper because it was not signed by a recognized officer, 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.

¶ 14.17 Rejection, 35 U.S.C. 251, Recapture

Claim[1] rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.

[2]

Examiner Note:

In bracket 2, the examiner should explain the specifics of why recapture exists, including an identification of the omitted/broadened claim limitations in the reissue which provide the "broadening aspect" to the claim(s), where in the original application the narrowed claim scope was presented/argued to obviate a rejection/objection, and that the reissue claim is not materially narrowed to avoid recapture (i.e., explain the prima facie analysis done for steps 1-3). See MPEP § 1412.02.

¶ 14.20.01 Amendments To Reissue-37 CFR 1.173(b)

Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.

Examiner Note:

This form paragraph may be used in the first Office action to advise applicant of the proper manner of making amendments, and to notify applicant of the need to file a supplemental oath/declaration before the application can be allowed.

¶ 14.21.01 Improper Amendment To Reissue - 37 CFR 1.173(b)

The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications. A supplemental paper correctly amending the reissue application is required.

A shortened statutory period for reply to this letter is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter.

Examiner Note:

1. This form paragraph may be used for any 37 CFR 1.173(b) informality as to an amendment submitted in a reissue application prior to final rejection. After final rejection, applicant should be informed that the amendment will not be entered by way of an Advisory Office action.

2. In bracket 2, specify the proposed amendments that are not in compliance.

¶ 14.21.09.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive Intention - Application filed Before Sept. 16, 2012, External Knowledge

Claims [1] rejected under pre-AIA 35 U.S.C. 251 because this application was filed before September 16, 2012 and error "without any deceptive intention" has not been established. In view of the judicial determination in [2] of [3] on the part of applicant, a conclusion that any error was "without deceptive intention" cannot be supported. [4]

Examiner Note:

1. In bracket 1, list all claims in the reissue application.

2. In bracket 2, list the Court or administrative body which made the determination of fraud or inequitable conduct on the part of applicant.

3. In bracket 3, insert --fraud--, --inequitable conduct-- and/or --violation of duty of disclosure--.

4. In bracket 4, point out where in the opinion (or holding) of the Court or administrative body the determination of fraud, inequitable conduct or violation of duty of disclosure is set forth. Page number, column number, and paragraph information should be given as to the opinion (or holding) of the Court or administrative body. The examiner may add explanatory comments.

5. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.

¶ 14.22.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive Intention — Application filed Before Sept. 16, 2012, Evidence in the Application

Claims [1] rejected under pre-AIA 35 U.S.C. 251 because this application was filed before September 16, 2012 and error "without any deceptive intention" has not been established. In view of the reply filed on [2], a conclusion that any error was "without deceptive intention" cannot be supported. [3]

Examiner Note:

1. In bracket 1, list all claims in the reissue application.

2. In bracket 2, insert the filing date of the reply which provides an admission of fraud, inequitable conduct or violation of duty of disclosure, or that there was a judicial determination of same.

3. In bracket 3, insert a statement that there has been an admission or a judicial determination of fraud, inequitable conduct or violation of duty of disclosure which provide circumstances why applicant’s statement in the oath or declaration of lack of deceptive intent should not be taken as dispositive. Any admission of fraud, inequitable conduct or violation of duty of disclosure must be explicit, unequivocal, and not subject to other interpretation.

4. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.

¶ 14.22.01 Rejection, 35 U.S.C. 251, New Matter

Claim [1] rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows: [2]

Examiner Note:

1. In bracket 2, fill in the applicable page and line numbers and provide an explanation of your position, as appropriate.

2. A rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, should also be made if the new matter is added to the claims or is added to the specification and affects the claims. If new matter is added to the specification and does not affect the claims, an objection should be made based upon 35 U.S.C. 132 using form paragraph 7.28.

¶ 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 14.24 et 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.

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.

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 an additional disclaimer fee will not be required for the submission of a replacement or supplemental terminal disclaimer.

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 an additional disclaimer fee will not be required for the submission of a replacement or supplemental terminal disclaimer.

¶ 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, applicant does not have to pay another disclaimer fee when submitting a replacement or supplemental terminal disclaimer, 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 and any patent granted on the reference 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 any patent granted on the reference 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 the reference patent and 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 and any patent granted on the reference 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 any patent granted on the reference 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 the reference patent and 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:

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 and any patent granted on the pending reference application 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 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 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).

¶ 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 Disclaimer Fee Not Required Twice - Applicant

It should be noted that applicant is not required to pay another disclaimer fee as set forth in 37 CFR 1.20(d) when submitting a replacement or supplemental terminal disclaimer.

Examiner Note:

1. This form paragraph can be used to notify an applicant that another disclaimer fee will not be required 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 Disclaimer Fee Not Required Twice - Patent Owner

It should be noted that patent owner is not required to pay another disclaimer fee as set forth in 37 CFR 1.20(d) when submitting a replacement or supplemental terminal disclaimer.

Examiner Note:

This form paragraph can be used to notify a patent owner that another disclaimer fee will not be required when a replacement or supplemental terminal disclaimer is submitted.

¶ 14.36 Suggestion That "Applicant" Request a Refund

Since the required fee for the terminal disclaimer was previously paid, applicant’s payment of an additional terminal disclaimer fee is not required. Applicant may request a refund of this additional terminal disclaimer fee 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.

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

Since the required fee for the terminal disclaimer was previously paid, patent owner’s payment of an additional terminal disclaimer fee is not required. Patent owner may request a refund of this additional terminal disclaimer fee 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.

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) ).

The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patent-forms. 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/patents/process/file/efs/guidance/eTD-info-I.jsp.

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) ).

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.