¶ 14.27.07 Examples of Acceptable Terminal Disclaimer Language in Patent To Be Granted (activities undertaken within the scope of a joint research agreement)
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 ______________, 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 the instant application and 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.
Owner, or attorney/agent of record, of the instant application:
Signature:__________________________
Printed/Typed name:_________________
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 of the instant application waives the right to separately enforce the prior patent and any patent granted on the instant application. The owner of the instant application hereby agrees that the prior patent and any patent granted on the instant application shall be enforceable only for and during such period that the prior 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.
Owner, or attorney/agent of record, of the instant application:
Signature:___________________________
Printed/Typed name:__________________
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 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).