¶ 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).

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).