¶ 14.27.04 Examples of Acceptable Terminal Disclaimer Language in Patent To Be Granted
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 Obviousness-Type 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 _____________, 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 an Obviousness-Type Double Patenting Rejection Over A Prior 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 prior patent No. ________________ as the term of said prior 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 prior 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 each form 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 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).