MPEP § 1490 — MPEP § 1490
Current through: 2022-07-01

1490-Disclaimers 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1490 
 

 
 
 
 
 
 1490 Disclaimers [R-01.2024]

 
 35 U.S.C. 253 
 Disclaimer. 

 
 (a) IN GENERAL.—Whenever a claim of a patent is invalid the remaining
 claims shall not thereby be rendered invalid. A patentee, whether of the whole or
 any sectional interest therein, may, on payment of the fee required by law, make
 disclaimer of any complete claim, stating therein the extent of his interest in
 such patent. Such disclaimer shall be in writing and recorded in the Patent and
 Trademark Office, and it shall thereafter be considered as part of the original
 patent to the extent of the interest possessed by the disclaimant and by those
 claiming under him.
 

 (b) ADDITIONAL DISCLAIMER OR DEDICATION.—In the manner
 set forth in subsection (a), any patentee or applicant may disclaim or dedicate to
 the public the entire term, or any terminal part of the term, of the patent
 granted or to be granted.
 

 
 

 
 37 CFR 1.321 Statutory disclaimers, including terminal
 disclaimers. 

 
 (a) A patentee owning the whole or any sectional interest in a patent
 may disclaim any complete claim or claims in a patent. In like manner any patentee
 may disclaim or dedicate to the public the entire term, or any terminal part of
 the term, of the patent granted. Such disclaimer is binding upon the grantee and
 its successors or assigns. A notice of the disclaimer is published in the
 Official Gazette and attached to the printed copies of the
 specification. The disclaimer, to be recorded in the Patent and Trademark Office,
 must:
 
 (1) Be signed by the patentee, or an attorney or agent of
 record;
 

 (2) Identify the patent and complete claim or claims, or term
 being disclaimed. A disclaimer which is not a disclaimer of a complete claim
 or claims, or term, will be refused recordation;
 

 (3) State the present extent of patentee’s ownership interest
 in the patent; and 
 

 (4) Be accompanied by the fee set forth in §
 1.20(d) .
 

 
 

 (b) An applicant may disclaim or dedicate to the public the entire
 term, or any terminal part of the term, of a patent to be granted. Such terminal
 disclaimer is binding upon the grantee and its successors or assigns. The terminal
 disclaimer, to be recorded in the Patent and Trademark Office, must:
 
 (1) Be signed by the applicant or an attorney or agent of
 record:
 

 (2) Specify the portion of the term of the patent being
 disclaimed;
 

 (3) State the present extent of applicant’s ownership interest
 in the patent to be granted; and 
 

 (4) Be accompanied by the fee set forth in §
 1.20(d) .
 

 
 

 (c) A terminal disclaimer, when filed to obviate judicially created
 double patenting in a patent application or in a reexamination proceeding except
 as provided for in paragraph (d) of this section, must:
 
 (1) Comply with the provisions of paragraphs (b)(2) through
 (b)(4) of this section;
 

 (2) Be signed in accordance with paragraph (b)(1) of this
 section if filed in a patent application or in accordance with paragraph
 (a)(1) of this section if filed in a reexamination proceeding; and
 

 (3) Include a provision that any patent granted on that
 application or any patent subject to the reexamination proceeding shall be
 enforceable only for and during such period that said patent is commonly
 owned with the application or patent which formed the basis for the
 judicially created double patenting.
 

 
 

 (d) A terminal disclaimer, when filed in a patent application or in a
 reexamination proceeding to obviate double patenting based upon a patent or
 application that is not commonly owned but was disqualified as prior art as set
 forth in either § 1.104(c)(4)(ii) or (c)(5)(ii) as resulting from
 activities undertaken within the scope of a joint research agreement, must:
 
 (1) Comply with the provisions of paragraphs (b)(2) through
 (b)(4) of this section;
 

 (2) Be signed in accordance with paragraph (b)(1) of this
 section if filed in a patent application or be signed in accordance with
 paragraph (a)(1) of this section if filed in a reexamination proceeding;
 and
 

 (3) Include a provision waiving the right to separately enforce
 any patent granted on that application or any patent subject to the
 reexamination proceeding and the patent or any patent granted on the
 application which formed the basis for the double patenting, and that any
 patent granted on that application or any patent subject to the
 reexamination proceeding shall be enforceable only for and during such
 period that said patent and the patent, or any patent granted on the
 application, which formed the basis for the double patenting are not
 separately enforced.
 

 
 

 
 

 
 Pre-AIA 37 CFR 1.321 Statutory disclaimers, including terminal
 disclaimers. 

 *****

 
 (b) An applicant or assignee may disclaim or dedicate
 to the public the entire term, or any terminal part of the term, of a patent to be
 granted. Such terminal disclaimer is binding upon the grantee and its successors
 or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark
 Office, must:
 
 (1) Be signed:
 
 (i) By the applicant, or

 (ii) If there is an assignee of record of
 an undivided part interest, by the applicant and such assignee, or
 
 

 (iii) If there is an assignee of record of
 the entire interest, by such assignee, or 
 

 (iv) By an attorney or agent of record;

 
 

 (2) Specify the portion of the term of the
 patent being disclaimed;
 

 (3) State the present extent of applicant’s or
 assignee's ownership interest in the patent to be granted; and 
 

 (4) Be accompanied by the fee set forth in
 §
 1.20(d) .
 

 
 

 
 *****

 

 35 U.S.C. 253(a) corresponds to the
 provisions of pre-AIA 35
 U.S.C. 253 , first paragraph except that the first sentence of
 pre-AIA 35 U.S.C.
 251 includes the phrase “without any deceptive intention” between
 “Whenever” and “a claim.” Effective September 16, 2012, Public Law 112-29, sec. 20, 125
 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended 35 U.S.C. 253 to
 eliminate the “without any deceptive intention” clause. 35 U.S.C.
 253(b) corresponds to the provisions of pre-AIA 35 U.S.C.
 253 , second paragraph.
 

 A disclaimer is a statement filed by an owner (in part or in entirety) of
 a patent or of a patent to be granted (i.e., an application), in which said owner
 relinquishes certain legal rights to the patent. The owner of a patent or an application is
 the original inventor(s) who has/have not assigned away their rights or the assignee(s) of
 the original inventor(s), or a combination of the two. The patent or application is
 assigned by one assignment or by multiple assignments which establish a chain of title from
 the inventor(s) to the assignee(s).
 

 There are two types of disclaimers: a statutory disclaimer
 and a terminal disclaimer. A statutory disclaimer is a statement in which a patent owner
 relinquishes legal rights to one or more claims of a patent. A terminal disclaimer is a
 statement in which a patentee or applicant disclaims or dedicates to the public the entire
 term or any terminal part of the term of a patent or patent to be granted (filed in an
 application). Although a statutory disclaimer and a terminal disclaimer are both provided
 for by statute, the manner in which the two terms have been used historically distinguishes
 them. The phrase “statutory disclaimer” is used to denote a disclaimer of one or more
 claims of an issued patent whereas the phrase “terminal disclaimer” is used to denote a
 disclaimer of the entire term or any terminal part of the term of a patent or a patent to
 be granted.
 

 I. STATUTORY DISCLAIMERS Under 35 U.S.C. 253(a) and
 37 CFR
 1.321(a) , the owner of a patent may disclaim a complete claim or
 claims of the patent. This may result from a lawsuit or because the patent owner has
 reason to believe that the claim or claims are too broad or otherwise invalid. A
 statutory disclaimer is not, however, a vehicle for adding or amending claims, because
 there is no provision for doing so in the statute ( 35 U.S.C. 253 )
 or the rules ( 37
 CFR 1.321 ). Thus, claims of a patent cannot be disclaimed in favor
 of new claims to be added to the patent or an amendment to existing claims. If the
 patent is involved in an interference or a trial before the Patent Trial and Appeal
 Board (PTAB), see 37
 CFR 41.127(a) and 37 CFR 42.80 .
 

 As noted above, a statutory disclaimer is a statement in
 which a patent owner relinquishes legal rights to one or more complete claims of a
 patent. However, a patent owner’s disclaimer does not necessarily relinquish the rights
 of the public or a third party. See, e.g., Rembrandt Wireless Techs., LP v.
 Samsung Elecs. Co., 853 F.3d 1370, 1384, 122 USPQ2d 1301, 1310 (Fed. Cir.
 2017)(discussing cases where courts "have not readily extended the effects of disclaimer
 to situations where others besides the patentee have an interest that relates to the
 relinquished claims”); Eli Lilly & Co. v. Barr Labs., Inc., 251
 F.3d 955, 967 n.5, 58 USPQ2d 1869, 1878 n.5 (Fed. Cir. 2001)(“[a] patent owner cannot
 avoid double patenting by disclaiming the earlier patent”).
 

 II. TERMINAL DISCLAIMERS 35 U.S.C.
 253(b) and 37 CFR 1.321(a) and (b) also provide
 for the filing by a patentee or applicant of a terminal disclaimer which disclaims or
 dedicates to the public the entire term or any terminal part of the term of a patent or
 patent to be granted. Note that the filing of a terminal disclaimer may affect any
 patent term adjustment provided under 35 U.S.C. 154(b) . Specifically,
 35 U.S.C.
 154(b)(2)(B) states that “[n]o patent the term of which has been
 disclaimed beyond a specified date may be adjusted under this section beyond the
 expiration date specified in the disclaimer.” See also In re Cellect,
 LLC, 81 F.4th 1216, 2023 USPQ2d 1011 (Fed. Cir. 2023).
 

 37 CFR
 1.321(c) specifically provides for the filing of a terminal
 disclaimer in an application or a reexamination proceeding for the purpose of overcoming
 a nonstatutory double patenting rejection. See MPEP § 804.02 .
 

 37 CFR
 1.321(d) specifically provides for the filing of a terminal
 disclaimer in an application or a reexamination proceeding for the purpose of overcoming
 a nonstatutory double patenting rejection based on a U.S. patent or application that is
 not commonly owned but was disqualified pursuant to either 37 CFR
 1.104(c)(4)(ii) or 1.104(c)(5)(ii) as the result of
 activities undertaken within the scope of a joint research agreement.
 

 37 CFR 1.321(a) provides for a
 patentee to terminally disclaim a patent, but does not specifically provide for terminal
 disclaimers with common ownership enforcement provisions or joint research agreement
 enforcement provisions to obviate any nonstatutory double patenting issues. For terminal
 disclaimers filed under 37 CFR 1.321(c) or (d) in patents
 not under reexamination, such terminal disclaimers typically will be reviewed by Office
 staff only to the extent necessary to determine whether the requirements of
 37 CFR
 1.321(a) are met.
 

 III. SIGNING AND SUPPORTING A DISCLAIMER 

 A. Disclaimer Filed in a Patent or Reexamination Proceeding Pursuant to 37 CFR 1.321(a) and
 pre-AIA 37 CFR
 1.321(a) , a statutory disclaimer or a terminal disclaimer filed
 in a patent or a reexamination proceeding must be signed by either (1) the patentee
 (the assignee, the inventor(s) if the patent is not assigned, or the assignee and the
 inventors who have ownership interest if the patent is assigned-in-part), or (2) an
 attorney or agent of record. A registered practitioner acting in a representative
 capacity under 37
 CFR 1.34 is not permitted to sign the disclaimer. Where the
 attorney or agent of record signs the disclaimer, there is no need to comply with
 37 CFR
 3.73 .
 

 For a terminal disclaimer filed under
 37 CFR
 1.321(c) or (d) in a reexamination proceeding to obviate a
 nonstatutory double patenting rejection, the terminal disclaimer must be signed in
 accordance with 37 CFR 1.321(a)(1) and must be filed in the reexamination
 proceeding in which the rejection was made.
 

 B. Terminal Disclaimer in an
 Application 37 CFR 1.321(b) and
 pre-AIA 37 CFR
 1.321(b)(1) set forth the signature requirements for a terminal
 disclaimer filed in an application. 
 

 For a terminal disclaimer filed under
 37 CFR
 1.321(c) or (d) in an application to obviate a nonstatutory
 double patenting rejection, the terminal disclaimer must be signed in accordance with
 37 CFR
 1.321(b)(1) and must be filed in the application in which the
 rejection was made.
 

 Note that the signature requirements for terminal
 disclaimers filed in a pending application differ depending on the filing date of the
 application (compare 37 CFR 1.321(b)(1) with
 pre-AIA 37 CFR
 1.321(b)(1) reproduced above). If the application filing date
 is on or after September 16, 2012, see subsection 1, below; if the application was
 filed was filed before September 16, 2012, see subsection 2, below.
 

 Note that the signature on the disclaimer need not be
 an original signature. Pursuant to 37 CFR 1.4(d)(1)(ii) , the
 submitted disclaimer can be a copy, such as a photocopy or facsimile transmission of
 an original disclaimer.
 

 1. Terminal Disclaimer in Application
 Filed on or After September 16, 2012 A terminal disclaimer filed in a pending
 application that was filed on or after September 16, 2012 must be signed by the
 applicant or an attorney or agent of record. See 37 CFR
 1.321(b)(1) .
 

 The word “applicant,” in this context, refers to
 the inventor or all of the joint inventors, or to the person applying for a patent
 as provided in 37 CFR 1.43 , 1.45 , or
 1.46 . Under 37 CFR 1.43 , “applicant”
 refers to the legal representative of a deceased or legally incapacitated
 inventor. Under 37 CFR 1.45 , “applicant”
 refers to the inventors; if fewer than all joint inventors are applying for a
 patent as provided in 37 CFR 1.45 , the phrase “the
 applicant” means the joint inventors who are applying for the patent without the
 omitted inventor(s). Under 37 CFR 1.46 , “applicant”
 refers to the assignee, the person to whom the inventor is under an obligation to
 assign the invention, or the person who otherwise shows sufficient proprietary
 interest in the matter, who is applying for a patent under 37 CFR
 1.46 and not the inventor.
 

 An assignee who is not an applicant must file a
 request to change the applicant under 37 CFR
 1.46(c) , including an application data sheet under
 37 CFR
 1.76 specifying the applicant in the application information
 section, and a 37 CFR 3.73(c) statement to
 become the 37 CFR 1.321(b)(1) applicant in order to file and sign a
 terminal disclaimer.
 

 In order to obviate a non-statutory double patenting
 rejection, the entirety of the ownership must sign the terminal disclaimer
 disclaiming with respect to the reference on which the rejection is based, or
 multiple terminal disclaimers so disclaiming. Thus, if a 37 CFR
 1.321(b)(1) applicant who is not the owner (e.g., an
 inventor who assigned away the rights to the application) signs a terminal
 disclaimer, the terminal disclaimer will not be entered and the non-statutory
 double patenting rejection will not be withdrawn by the examiner. The same is true
 if a 37 CFR
 1.321(b)(1) applicant representing less than the entirety of
 the ownership (see 37 CFR 1.42(c) ) signs a
 terminal disclaimer, and a terminal disclaimer from the remainder of the ownership
 has not also been filed.
 

 The terminal disclaimer may also be filed by an
 attorney or agent of record (a registered practitioner acting in a representative
 capacity under 37 CFR 1.34 is not permitted to sign the disclaimer). Where
 the attorney or agent of record signs the disclaimer, there is no need to comply
 with 37 CFR
 3.73 .
 

 2. Terminal Disclaimer in Application Filed Before September 16, 2012 A terminal disclaimer filed in a pending
 application that was filed before September 16, 2012 must be signed by a proper
 party as follows:
 

 
 (1) the applicant where the application has not
 been assigned,
 

 (2) the applicant and the assignee where each owns
 a part interest in the application,
 

 (3) the assignee where assignee owns the entire
 interest in the application, or
 

 (4) an attorney or agent of record.

 
 See pre-AIA 37 CFR
 1.321(b)(1) .
 

 Where the assignee signs the terminal disclaimer,
 there is a requirement to comply with pre-AIA 37 CFR 3.73(b) in
 order to satisfy pre-AIA 37 CFR 1.321 , unless an attorney or agent of record
 signs the terminal disclaimer. In order to comply with pre-AIA 37 CFR
 3.73(b) , the assignee’s ownership interest must be
 established by:
 

 
 (1) filing in the application or patent evidence
 of a chain of title from the original owner 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
 

 (2) specifying in the record of the application or
 patent where such evidence is recorded in the Office (e.g., reel and frame
 number, etc.). The submission with respect to pre-AIA 37 CFR
 3.73(b) to establish ownership must be signed by a
 party authorized to act on behalf of the assignee. See also
 MPEP §
 324 as to compliance with pre-AIA 37 CFR
 3.73(b) . A copy of the “Statement Under 37 CFR
 3.73(b),” which is reproduced in MPEP § 324 , may be sent by
 the examiner to applicant to provide an acceptable way to comply with the
 requirements of pre-AIA 37 CFR
 3.73(b) .
 

 
 A statement of assignee interest in a terminal
 disclaimer that “A and B are the owners of 100% of the instant application...” is
 sufficient to satisfy the pre-AIA 37 CFR 1.321(b)(3) 
 requirement that a terminal disclaimer “state the present extent of applicant’s or
 assignee’s ownership interest in the patent to be granted.” Although the quoted
 statement does not identify what specific percentage is owned by A and what
 specific percentage is owned by B, the statement does provide consent to the
 terminal disclaimer by the entirety of the ownership of the application (A and B
 own all of the invention, regardless of the individual percentages they own). 
 

 The terminal disclaimer may also be filed by an
 attorney or agent of record (a registered practitioner acting in a representative
 capacity under 37 CFR 1.34 is not permitted to sign the disclaimer). Where
 the attorney or agent of record signs the disclaimer, there is no need to comply
 with 37 CFR
 3.73 .
 

 IV. PROCESSING IN CERTIFICATES OF CORRECTION BRANCH The Certificates of Correction Branch is responsible for the processing
 of all statutory disclaimers filed under 35 U.S.C. 253(a) and
 37 CFR
 1.321 and all terminal disclaimers filed under 35 U.S.C. 253(b) 
 and 37 CFR
 1.321 , except for terminal disclaimers filed in a pending
 application or reexamination proceeding. This processing involves:
 

 
 (A) Determining the compliance of the disclaimer with
 35 U.S.C.
 253 and 37 CFR 1.321(a) and
 3.73 ;
 

 (B) Notifying applicant or patentee when the disclaimer is not
 acceptable;
 

 (C) Recording the disclaimers in the record of the application file;
 
 

 (D) Providing the statutory disclaimer data and terminal disclaimer
 data (when the terminal disclaimer is filed in a patent) for printing in the
 Official Gazette; and 
 

 (E) Providing a certificate of correction for patents
 when the terminal disclaimer was entered during the pendency of the application
 but the statement indicating that the patent is subject to a terminal disclaimer
 was not printed on the title page of the patent and/or the asterisk associated
 with the statement was not placed before the patent issue date in the right hand
 corner.
 

 V. PROCESSING OF TERMINAL DISCLAIMER IN PENDING APPLICATION OR PROCEEDING 

 A. eTerminal
 Disclaimers The Office provides for the submission of eTerminal
 Disclaimers (eTDs) via the USPTO patent electronic filing system. A web-based eTD may
 be filled out completely online using web-screens and can include up to 50 reference
 applications and 50 reference patents. An eTD that meets all requirements is
 auto-processed, approved immediately upon submission, and directly loads into the
 USPTO databases which will increase accuracy and facilitate faster processing. Note
 that eTDs are accepted only for pending nonprovisional utility applications
 (including national stage and reissue) and pending design applications (including
 reissue). 
 

 The eTD can only be used if:

 
 1. the inventor(s) named as the applicant(s) in
 the application own(s) 100% of the entire right, title and interest;
 

 2. the assignee and/or obligated assignee named as
 the applicant in the application owns 100% of the entire right, title and
 interest; or
 

 3. a combination of inventor(s) and partial
 assignee(s) named as the applicant(s) in the application together own 100% of
 the entire right, title and interest.
 

 
 Any eTD submitted after the date of payment of the
 issue fee, but prior to the patent grant date must include a certificate of
 correction requesting that the face of the patent be amended to state that the patent
 is subject to a terminal disclaimer, unless the face of the patent already includes
 the language that the patent is subject to a terminal disclaimer.
 

 Requests for terminal disclaimers for plant patent
 applications, reexaminations, and terminal disclaimers based on a joint research
 agreement must be filed by paper or a scanned image PDF submitted via the USPTO
 patent electronic filing system. For more information about eTerminal Disclaimers,
 refer to www.uspto.gov/
 TerminalDisclaimer .
 

 B. Terminal Disclaimers in Paper or Scanned Image
 Format Where a terminal disclaimer other than an eTD is filed in an
 application pending in a TC, it will be processed by a Paralegal Specialist of the
 Patent Legal Research Center. The paralegal will:
 

 
 (A) Determine compliance with 35 U.S.C. 253 and
 37 CFR
 1.321 and 3.73 , and ensure that the
 appropriate terminal disclaimer fee set forth in 37 CFR
 1.20(d) is/was applied;
 

 (B) Notify the examiner having charge of the application whether
 the terminal disclaimer is acceptable or not by completing a Terminal
 Disclaimer review decision form;
 

 (C) Where the terminal disclaimer is not acceptable, indicate the
 nature of the informalities so that the examiner can inform applicant in the
 next Office action. 
 

 
 The paralegal completes a Terminal Disclaimer review decision form
 to notify the examiner of the nature of any informalities in the terminal disclaimer.
 The examiner should notify the applicant of the informalities in the next Office
 action, or by interview with applicant if such will expedite prosecution of the
 application. 
 

 The approval of a terminal disclaimer by the
 paralegal is not an indication that the terminal disclaimer correctly identifies the
 target application or patent that was the basis for any outstanding nonstatutory
 double patenting rejection. The examiner must determine whether the correct target
 application or patent is identified in the terminal disclaimer before withdrawing the
 nonstatutory double patenting rejection(s) based on the target application or
 patent.
 

 VI. OTHER MATTERS DIRECTED TO TERMINAL DISCLAIMERS 

 A. Requirements of Terminal Disclaimers A proper terminal disclaimer must disclaim the terminal part of the
 statutory term of any patent granted on the application being examined (or the
 statutory term of the patent) which would extend beyond the expiration date of the
 full statutory term, shortened by any terminal disclaimer, of the patent (or of any
 patent granted on the application) that is the basis of the nonstatutory double
 patenting. Note the exculpatory language in the second paragraph of the sample
 terminal disclaimer forms, PTO/SB/25, PTO/SB/25a, PTO/SB/26, PTO/SB/26a, PTO/AIA/25,
 and PTO/AIA/26, provided at the end of this Chapter. That language (“In making the
 above disclaimer, the owner does not disclaim...”) is permissible in a terminal
 disclaimer.
 

 A terminal disclaimer must state that the agreement is to run with
 any patent granted on the application being examined and is to be binding upon the
 grantee, its successors, or assigns.
 

 A terminal disclaimer filed to obviate a nonstatutory double
 patenting rejection based on a commonly owned reference patent or application must
 comply with the requirements of 37 CFR 1.321(c) . The terminal
 disclaimer must state that any patent granted on the application being examined will
 be enforceable only for and during the period that it and the reference patent or any
 patent granted on the reference application are commonly owned. See
 MPEP §
 2146.02 for examples of common ownership, or lack thereof.
 For terminal disclaimers, however, common ownership must be at the time of
 enforcement whereas the guidance in MPEP § 2146 et
 seq. requires determining ownership not later than the effective filing
 date of the claimed invention. See MPEP § 804.03 . 
 

 A terminal disclaimer filed under 37 CFR 1.321(c) or
 (d) after the expiration of the reference patent is not
 effective to obviate a nonstatutory double patenting rejection. See
 Boehringer Ingelheim Int’l v. Barr Laboratories, 592 F.3d 1340,
 93 USPQ2d 1417, 1422-23 (Fed. Cir. 2010) (The Federal Circuit found a terminal
 disclaimer filed in a patent to overcome double patenting based upon an expired
 parent patent was not effective. Specifically, the court stated: "By failing to
 terminally disclaim a later patent prior to the expiration of an earlier related
 patent, a patentee enjoys an unjustified advantage—a purported time extension of the
 right to exclude from the date of the expiration of the earlier patent. The patentee
 cannot undo this unjustified timewise extension by retroactively disclaiming the term
 of the later patent because it has already enjoyed rights that it seeks to disclaim.
 Permitting such a retroactive terminal disclaimer would be inconsistent with '[t]he
 fundamental reason' for obviousness-type double patenting, namely, 'to prevent
 unjustified timewise extension of the right to exclude.'" (quoting In re Van
 Ornum, 686 F.2d 937, 943-44, 214 USPQ 761, 766 (CCPA 1982) (emphasis
 removed))). In addition,“[a] patent owner cannot avoid double patenting by
 disclaiming the earlier patent.” Eli Lilly & Co. v. Barr Labs., Inc.,
 251 F.3d 955, 967 n.5, 58 USPQ2d 1869, 1878 n.5 (Fed. Cir. 2001).
 

 A terminal disclaimer filed to obviate a nonstatutory double
 patenting rejection based on a non-commonly owned patent or application disqualified
 under 35
 U.S.C. 102(b)(2)(C) or under pre-AIA 35 U.S.C.
 103(c) as a result of activities undertaken within the scope of
 a joint research agreement under 35 U.S.C. 102(c) or
 pre-AIA 35
 U.S.C. 103(c)(2) and (3) must comply with 37 CFR
 1.321(d) , which sets forth signature, waiver rights and
 enforceability requirements.
 

 The terminal disclaimer under 37 CFR
 1.321(d) 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; 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.
 

 
 Any terminal disclaimer submitted after the date of payment of the
 issue fee but prior to patent grant date requires the filing of a certificate of
 correction requesting that the face of the patent be amended to state that the patent
 is subject to a terminal disclaimer, unless the face of the patent already includes
 the language that the patent is subject to a terminal disclaimer.
 

 The appropriate one of form paragraphs
 14.27.04.fti to 14.27.08 
 (reproduced below) may be used to provide applicant or patent owner with an example
 of acceptable terminal disclaimer language. Additionally, copies of forms PTO/SB/25,
 PTO/SB/25a, PTO/SB/26, PTO/SB/26a, PTO/AIA/25, and PTO/AIA/26 (provided at the end of
 this Chapter) may be attached to the Office action to provide sample terminal
 disclaimers.
 

 Pursuant to 35 U.S.C. 253(b) ,
 
 "any patentee or applicant may disclaim or
 dedicate to the public... any terminal part of the term, of the patent granted or
 to be granted."
 
 
 Accordingly, the disclaimer must be of a
 terminal portion of the term of the entire patent to be granted. A disclaimer of a
 terminal portion of the term of an individual claim, or individual claims will not be
 accepted. A disclaimer of the term of individual claims would not be appropriate
 because the claims of a pending application or proceeding are subject to
 cancellation, amendment, or renumbering. It is further noted that the statute does
 not provide for conditional disclaimers (whether they are terminal disclaimers or
 statutory disclaimers). Accordingly, a proposed disclaimer that is made contingent on
 any patent term adjustment determinations, outcomes of litigation, the allowance of
 certain claims, or the granting of a petition is improper and cannot be accepted. The
 disclaimer should identify the disclaimant and their interest in the application and
 should specify the date when the disclaimer is to become effective.
 

 B. Effect of Terminal Disclaimers in Continuing Applications, Reexamination
 Proceedings, and Reissues A terminal disclaimer filed to obviate a nonstatutory double
 patenting rejection is effective only with respect to the application or patent
 identified in the disclaimer unless by its terms it extends to continuing
 applications (in which case, applicant must file a copy of the disclaimer in the
 continuing application, to obviate any nonstatutory double patenting rejection to
 which the disclaimer is directed). See President and Fellows of Harvard
 College v. Rea, No. 1:12-CV-1034, 2013 WL 2152635 (E.D.Va. May 15,
 2013). For example, a terminal disclaimer filed in a parent application normally has
 no effect on a continuing application claiming filing date benefits of the parent
 application under 35 U.S.C. 120 . A terminal
 disclaimer filed in a parent application to obviate a nonstatutory double patenting
 rejection does, however, carry over to a continued prosecution
 application (CPA) filed under 37 CFR 1.53(d) (effective July
 14, 2003, CPAs are only available in design applications). The terminal disclaimer
 filed in the parent application carries over because the CPA retains the
 same application number as the parent application, i.e., the
 application number to which the previously filed terminal disclaimer is directed. If
 applicant does not want the terminal disclaimer to carry over to the CPA, applicant
 must file a petition under 37 CFR 1.182 , along with the
 required petition fee, requesting the terminal disclaimer filed in the parent
 application not be carried over to the CPA; see below “Withdrawing a Terminal
 Disclaimer” (paragraph “A. Before Issuance of Patent”). If applicant files a Request
 for Continued Examination (RCE) of an application under 37 CFR 1.114 
 (which can be filed on or after May 29, 2000 for an application filed on or after
 June 8, 1995), any terminal disclaimer present will continue to operate, because a
 new application has not been filed, but rather prosecution has been continued in the
 existing application. A petition under 37 CFR 1.182 , along with the
 required petition fee, may be filed, if withdrawal of the terminal disclaimer is to
 be requested. 
 

 Reexamination proceedings: A reexamination is a
 proceeding in the issued patent. Therefore, if a terminal disclaimer was filed during
 prosecution of the application which resulted in the patent under reexamination, the
 terminal disclaimer will continue to operate.
 

 Reissue applications: Where a terminal disclaimer was
 filed and approved in an original application, a copy of that terminal disclaimer is
 not required to be filed by applicant in the reissue application. 
 

 An internal review form will be filled out to indicate that a
 terminal disclaimer has been filed for the patent (and will be effective for the
 patent as it will be reissued). The internal review form will be added to the reissue
 application file prior to allowance. A copy of the terminal disclaimer will not be
 placed into the reissue application file history and the front page of the reissue
 patent, when issued, will not indicate that the patent is subject to a terminal
 disclaimer (except if a different terminal disclaimer is filed in the reissue
 application). However, as stated above, the terminal disclaimer will be effective for
 the reissue patent. 
 

 C. Terminal Disclaimer Identifies the Wrong Reference Application or
 Patent In some instances a terminal disclaimer filed to obviate a
 nonstatutory double patenting rejection will identify the wrong reference application
 or patent (i.e., an application or patent which is not the basis for the double
 patenting rejection). In these instances, a replacement terminal disclaimer
 identifying the correct reference application or patent would be required by the
 examiner. Once a correct replacement terminal disclaimer is received, the next Office
 action should make it clear that 
 "the second
 terminal disclaimer replaces the first terminal disclaimer, and the first terminal
 disclaimer is thus void."
 
 
 A second terminal disclaimer fee
 should not be assessed/charged, because the first fee is applied to the second
 terminal disclaimer.
 

 D. Two or More Copending Applications An examiner may become aware of two or more copending
 applications which share the same inventive entity, at least one common (joint)
 inventor, a common applicant, and/or a common owner/assignee, or that claim an
 invention resulting from activities undertaken within the scope of a joint research
 agreement as defined in 35 U.S.C. 102(c) or
 pre-AIA 35
 U.S.C. 103(c)(2) and (3) , that would raise an issue of double
 patenting if one of the applications became a patent. See MPEP § 804 ,
 subsection I.B.1 for making a provisional rejection on the ground of double patenting
 in such situations.
 

 A provisional double patenting rejection should be
 made and maintained by the examiner until the rejection has been obviated or is no
 longer applicable except as noted below.
 

 If two (or more) pending applications are filed, in each of which a
 rejection of one claimed invention over the other on the ground of provisional
 nonstatutory double patenting (NSDP) is proper, the provisional NSDP rejection will
 be made in each application. Where there are three applications containing claims
 that conflict such that a provisional NSDP rejection is made in each application
 based upon the other two, and it is necessary to file terminal disclaimers to
 overcome the rejections, it is not sufficient to file a terminal disclaimer in only
 one of the applications addressing the other two applications. Rather, an appropriate
 terminal disclaimer must be filed in at least two of the applications to require
 common ownership or enforcement for all three applications. A terminal disclaimer may
 be required in each of the three applications in certain situations. See subsections
 1 to 3 below.
 

 1. Patent Term Filing Date for
 Original Utility or Plant Applications The doctrine of double patenting seeks to prevent
 the unjustified extension of patent exclusivity beyond the term of a patent. For
 utility and plant patents issuing on applications filed on or after June 8, 1995,
 35 U.S.C.
 154(a)(2) provides that the patent term ends on the date
 that is twenty years from the date on which the application for the patent was
 filed in the United States, or if the application contains a specific reference to
 one or more earlier-filed application(s) under 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) , twenty years from the filing date of the earliest
 such application. For a patent that issues on an international (PCT) application
 that entered the national stage under 35 U.S.C. 371 , the date that
 the application was filed in the United States is the international filing date;
 see MPEP §
 2701 , subsection II. Thus, where there are two or more
 applications with conflicting (i.e., patentably indistinct) claims, it may be
 necessary to determine the respective date from which the twenty year term is
 measured in view of 35 U.S.C. 154(a)(2) 
 (hereinafter referred to as the “patent term filing date”) for each of the
 applications which could potentially issue as patents.
 

 The patent term filing date of an original utility
 or plant application filed on or after June 8, 1995 is the earliest of:
 

 
 (a) The actual filing date of the application; or

 (b) The filing date of the earliest application
 for which the application claims the benefit of an earlier filing date under
 35
 U.S.C. 120 , 121 , 365(c) , or 386(c) . See
 37
 CFR 1.78 . See also MPEP §
 211 .
 
 

 

 For example, if an original (non-reissue;
 see MPEP §
 201.02 ) patent application has no specific
 reference to any earlier-filed application under 35 U.S.C.
 120 , 121 , 365(c) , or 386(c) , then the patent
 term filing date is the date that the application was actually filed.
 However, if an original patent application does include one or more specific
 references to an earlier-filed application under 35 U.S.C.
 120 , 121 , 365(c) , or 386(c) , then the patent
 term filing date is the filing date of the earliest reference application
 for which the benefit is properly claimed. See MPEP §
 2701 . For an application to properly claim the
 benefit of an earlier-filed application, it must meet the requirements of
 37
 CFR 1.78 (e.g., having a (joint) inventor in common,
 copendency, timeliness, and a proper reference). See 37 CFR
 1.78 and MPEP §
 211.01 et seq. It does not require a determination that the
 earlier-filed application discloses the invention in a manner provided by
 35 U.S.C. 112(a) . In
 other words, the issue of entitlement of a claimed invention to the benefit
 of the filing date of an earlier-filed application does not affect the
 expiration date of a patent containing the claims, and therefore need not be
 considered when determining the patent term filing date for the purpose of a
 double patenting analysis. 
 

 

 
 The patent term filing date of a reissue
 application for purposes of nonstatutory double patenting analysis is the patent
 term filing date of the original application that resulted in the patent for which
 reissue is sought.
 

 Benefit claims under 35 U.S.C.
 119(e) and foreign priority claims under 35 U.S.C. 119(a)-(d) or
 (f) , 365(a) or (b) , or
 386(a) or (b) are not taken into account when determining
 the term of an issued patent (see 35 U.S.C. 154(a)(2) and
 (a)(3) ), and therefore, are not taken into account in
 determining the patent term filing date of an application.
 

 2. Provisional Nonstatutory Double Patenting Rejection is the Only
 Rejection Remaining in a Utility or Plant Application Subsections (a)-(d) below discuss examination
 procedures when two or more utility or plant patent applications, filed on or
 after June 8, 1995, contain provisional nonstatutory double patenting rejections
 over each of the other application(s). The explanations refer to pairs of
 applications, but also apply when more than two applications are involved.
 

 (a) Application under Examination
 Has Earlier Patent Term Filing Date If a provisional nonstatutory double patenting
 rejection is the only rejection remaining in an application having the earlier
 patent term filing date, the examiner should withdraw the rejection in the
 application having the earlier patent term filing date and permit that
 application to issue as a patent, thereby converting the provisional
 nonstatutory double patenting rejection in the other application into a
 nonstatutory double patenting rejection upon issuance of the patent.
 

 (b) Application under Examination
 Has the Same Patent Term Filing Date If both the application under examination and
 the reference application have the same patent term filing date, the
 provisional nonstatutory double patenting rejection made in each application
 should be maintained until it is overcome. Provisional nonstatutory double
 patenting rejections are subject to the requirements of 37 CFR 1.111(b). Thus,
 applicant can overcome a provisional nonstatutory double patenting rejection by
 filing a reply that either shows that the claims subject to the rejection are
 patentably distinct from the claims of the reference application or includes a
 compliant terminal disclaimer in the application under 37 CFR
 1.321 that obviates the rejection. If the reply is
 sufficient, the examiner will withdraw the nonstatutory double patenting
 rejection in the application in which it was submitted.
 

 (c) Application under Examination
 Has Later Patent Term Filing Date If a provisional nonstatutory double patenting
 rejection is the only rejection remaining in an application, and that
 application has the later patent term filing date, the rejection should be
 maintained until applicant overcomes the rejection. Replies to overcome the
 rejection are discussed in subsection (b) above.
 

 (d) After Board Decision Not
 Reaching Provisional Nonstatutory Double Patenting
 Rejection If a decision by the Patent Trial and Appeal
 Board does not include an opinion on a provisional nonstatutory double
 patenting rejection, and includes a reversal of all other grounds as to a claim
 rejected based on provisional nonstatutory double patenting, and the applicant
 has not filed a proper terminal disclaimer, the examiner must act upon the
 provisional nonstatutory double patenting rejection. The examiner must first
 determine if any reference application used in the provisional nonstatutory
 double patenting rejection has issued as a patent. If the reference application
 has issued, the provisional rejection should be re-issued as a nonprovisional
 rejection and a terminal disclaimer should be required, for example, by using
 form paragraphs 8.33 - 8.39 as appropriate. See
 MPEP §
 804 , subsection II.B. The rejection may be made
 final, if otherwise appropriate. If the reference application has been
 abandoned or, notwithstanding the discussion in paragraphs (b) and (c) above,
 where the reference application has not matured to a patent and the provisional
 double patenting rejection is the only remaining rejection in the application,
 the examiner should withdraw the provisional rejection. See
 MPEP §
 1214.06 .
 

 3. Design Applications and Utility or Plant Applications Filed Prior
 to June 8, 1995 For design applications, patent term is measured
 from the issue date, and therefore, the determination of the patent term filing
 date is not necessary. If a provisional double patenting rejection (statutory or
 nonstatutory) is the only rejection remaining in the earlier filed of the two
 conflicting design applications, the examiner should withdraw that rejection and
 permit that application to issue as a patent. The examiner should maintain the
 provisional double patenting rejection in the later filed application and that
 rejection will be converted into a double patenting rejection when the allowed
 application issues as a patent unless the rejection has already been obviated. If
 both conflicting applications were filed on the same date, the provisional double
 patenting rejection made in each application should be maintained until it is
 overcome. See also MPEP § 804.03 , subsection IV, to resolve issues in
 applications that name different inventors and claim indistinct inventions.
 

 For double patenting analysis involving a utility
 or plant application filed prior to June 8, 1995, examiners should consult with
 their TQAS or SPE to determine if any of the provisional nonstatutory double
 patenting rejections should be withdrawn or not made. Likewise, for double
 patenting analysis for a utility or plant application and a reference design
 application or vice versa, examiners should consult with their TQAS or SPE to
 determine if any of the provisional nonstatutory double patenting rejections
 should be withdrawn or not made.
 

 VII. FORM PARAGRAPHS The following form paragraphs may be used to inform the applicant (or
 patent owner) of the status of a submitted terminal disclaimer.
 

 ¶ 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.
 

 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. For improper terminal
 disclaimers, see the form paragraphs which follow.
 
 
 

 ¶ 14.24 Terminal Disclaimer Not Proper - Introductory
 Paragraph
 

 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 NOT
 accepted.
 

 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. 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 the
 previously submitted disclaimer fee will be applied when a replacement or supplemental
 terminal disclaimer is submitted.
 

 5. Do not use in reexamination proceedings; use form paragraph
 14.25 
 instead.
 
 
 

 ¶ 14.25 Terminal Disclaimer Not Proper - Introductory Paragraph
 (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 NOT
 accepted.
 

 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 the
 previously submitted disclaimer fee will be applied when a replacement or supplemental
 terminal disclaimer is submitted.
 
 
 

 ¶ 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, the previously submitted disclaimer fee will be
 applied when a replacement or supplemental terminal disclaimer is submitted, 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 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 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 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 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 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 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:
 
 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 14.27.04.1 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 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 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).
 
 
 

 ¶ 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 Previously Submitted Disclaimer Fee Can Be Applied -
 Applicant
 

 The previously paid disclaimer fee as set forth in 37 CFR 1.20(d) can be
 applied when submitting a replacement or supplemental terminal disclaimer. If, however, the
 disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid,
 then applicant must pay the difference between the increased fee and the amount previously
 paid.
 

 Examiner Note:
 
 1. This form paragraph can be used to notify an applicant that the
 previously submitted disclaimer fee can be applied 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 Previously Submitted Disclaimer Fee Can Be Applied - Patent
 Owner
 

 The previously submitted disclaimer fee as set forth in 37 CFR 1.20(d) can be
 applied when submitting a replacement or supplemental terminal disclaimer. If, however, the
 disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid,
 then patent owner must pay the difference between the increased fee and the amount previously
 paid.
 

 Examiner Note:

 This form paragraph can be used to notify a patent owner that the
 previously submitted disclaimer fee can be applied when a replacement or supplemental
 terminal disclaimer is submitted.
 

 

 ¶ 14.36 Suggestion That “Applicant” Request a Refund

 The fee for the terminal disclaimer that was previously submitted has been
 applied to the filing of the replacement or supplemental terminal disclaimer. If the
 disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid,
 then applicant must pay the difference between the increased fee and the amount previously
 paid. Therefore, applicant's payment of another terminal disclaimer fee under
 37 CFR
 1.20(d) is not required or is not required for the full amount.
 Applicant may request a refund of any payment more than the terminal disclaimer fee required
 when the replacement or supplemental terminal disclaimer was filed 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 and the previously paid disclaimer fee
 was applied.
 

 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

 The fee for the terminal disclaimer that was previously submitted has been
 applied to the filing of the replacement or supplemental terminal disclaimer. If the
 disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid,
 then patent owner must pay the difference between the increased fee and the amount previously
 paid. Therefore, patent owner's payment of another terminal disclaimer fee under
 37 CFR
 1.20(d) is not required or is not required for the full amount. Patent
 owner may request a refund of any payment more than the terminal disclaimer fee required when
 the replacement or supplemental terminal disclaimer was filed 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 and the previously paid disclaimer fee
 was applied.
 

 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) ). A terminal disclaimer must be signed in compliance with
 37 CFR
 1.321(b) .
 

 The filing of a terminal disclaimer by itself is not a complete
 reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires
 that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior
 Office action. Even where the NSDP rejection is provisional, the reply must be complete.
 MPEP §
 804 , subsection I.B.1. For a reply to a non-final Office action, see
 37 CFR
 1.111(a) . For a reply to final Office action, see 37 CFR 1.113(c) . A
 request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final
 for consideration. See MPEP §§
 706.07(e) and 714.13 .
 
 

 The USPTO Internet website contains terminal disclaimer forms which may
 be used. Please visit www.uspto.gov/PatentForms . 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/TerminalDisclaimer . 
 

 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) ). A terminal
 disclaimer must be signed in compliance with 37 CFR 1.321(b) .
 

 The filing of a terminal disclaimer by itself is not a complete
 reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires
 that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior
 Office action. Even where the NSDP rejection is provisional, the reply must be complete.
 MPEP §
 804 , subsection I.B.1. For a reply to a non-final Office action, see
 37 CFR
 1.111(a) . For a reply to final Office action, see 37 CFR 1.113(c) . A
 request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final
 for consideration. See MPEP §§
 706.07(e) and 714.13 .
 
 

 The USPTO Internet website contains terminal disclaimer forms which
 may be used. Please visit www.uspto.gov/PatentForms . 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/TerminalDisclaimer .
 

 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.
 

 
 VIII. WITHDRAWING A RECORDED TERMINAL DISCLAIMER A recorded terminal disclaimer may be withdrawn if a petition under
 37 CFR
 1.182 is granted before the application in which it is filed
 issues as a patent, or if a terminal disclaimer is filed in a reexamination proceeding,
 before the reexamination certificate issues. After a patent or reexamination certificate
 issues, a recorded terminal disclaimer will not be nullified. 
 

 A. Before Issuance of Patent or Reexamination Certificate While the filing and recordation of an unnecessary terminal
 disclaimer has been characterized as an “unhappy circumstance” in In re
 Jentoft, 392 F.2d 633, 157 USPQ 363 (CCPA 1968), there is no statutory
 prohibition against nullifying or otherwise canceling the effect of a recorded
 terminal disclaimer which was erroneously filed before the patent issues. Likewise, a
 terminal disclaimer that was erroneously filed in a reexamination proceeding may be
 withdrawn before issuance of the reexamination certificate. Because the terminal
 disclaimer would not take effect until the patent is granted (or the reexamination
 certificate is published), and the public has not had the opportunity to rely on the
 terminal disclaimer, relief from this unhappy circumstance may be available by way of
 petition or by refiling the application (other than by refiling it as a CPA). 
 

 Under appropriate circumstances, consistent with the orderly
 administration of the examination process, the nullification of an erroneously filed
 recorded terminal disclaimer may be addressed by filing a petition under
 37 CFR
 1.182 requesting withdrawal of the recorded terminal
 disclaimer. Petitions seeking to reopen the question of the propriety of the double
 patenting rejection that prompted the filing of the terminal disclaimer have not been
 favorably considered. The filing of a continuing application other than a CPA, while
 abandoning the application in which the terminal disclaimer has been filed, will
 typically nullify the effect of a terminal disclaimer. The filing of a Request for
 Continued Examination (RCE) of an application under 37 CFR 1.114 
 will not nullify the effect of a terminal disclaimer, because a new application has
 not been filed, but rather prosecution has been continued in the existing
 application.
 

 B. After Issuance of Patent or Reexamination Certificate The mechanisms to correct a patent — certificate of correction
 ( 35 U.S.C.
 255 ), reissue ( 35 U.S.C. 251 ), reexamination
 ( 35 U.S.C.
 305 and pre-AIA 35 U.S.C. 314 ),
 inter partes review ( 35 U.S.C. 316 ), post grant review
 ( 35
 U.S.C. 326 ), and covered business method review — are not
 available to withdraw or otherwise nullify the effect of a recorded terminal
 disclaimer. As a general principle, public policy does not favor the restoration to
 the patent owner of something that has been freely dedicated to the public,
 particularly where the public interest is not protected in some manner — e.g.,
 intervening rights in the case of a reissue patent. See, e.g., Altoona
 Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 24 USPQ 308
 (1935). 
 

 Although certificates of correction ( 35 U.S.C. 255 )
 are available for the correction of some mistakes by applicants, this remedial
 provision is not available to withdraw or otherwise nullify a recorded terminal
 disclaimer. The scope of this remedial provision is limited in two ways — by the
 nature of the mistake for which correction is sought and the nature of the proposed
 correction. In re Arnott, 19 USPQ2d 1049 (Comm’r Pat. 1991). The
 nature of the mistake for which correction is sought is limited to those mistakes
 that are: 
 

 
 (A) of a clerical nature; 

 (B) of a typographical nature; or 

 (C) of a minor character. 

 
 The nature of the proposed correction is limited to those situations
 where the correction does not involve changes which would: 
 

 
 (A) constitute new matter, or

 (B) require reexamination.

 
 A mistake in filing a terminal disclaimer does not fall within any
 of the categories of mistake for which a certificate of correction of applicant’s
 mistake is permissible. 
 

 Although the remedial nature of reissue ( 35 U.S.C. 251 )
 is well recognized, reissue is not available to correct all errors. Reissue is not
 available to withdraw or otherwise nullify the effect of a terminal disclaimer
 recorded in an issued patent. First, the reissue statute only authorizes the Director
 of the USPTO to reissue a patent “for the unexpired part of the term of the original
 patent.” Because the granting of a reissue patent without the effect of a recorded
 terminal disclaimer would result in extending the term of the original patent,
 reissue under these circumstances would be contrary to the statute. In In re
 Yamazaki, 702 F.3d 1327, 1332, 104 USPQ2d 2024, 2028 (Fed. Cir. 2012),
 the Federal Circuit stated, as to a terminal disclaimer submitted for a patent, that
 the statutory patent term calculation begins but does not end with 35 U.S.C.
 154(a) . When a patent issues subject to a terminal disclaimer,
 the patentee has reduced the patent’s statutory term by effectively eliminating the
 disclaimed portion from the original patent, by operation of 35 U.S.C.
 253 (which indicates that a disclaimer of patent claims “shall
 thereafter be considered as part of the original patent” and such applies to
 disclaimers of patent term). Id . 
 

 Second, the principle against recapturing previously
 patented subject matter that has been intentionally dedicated to the public dates
 back to Leggett v. Avery, 101 U.S. 256 (1879). The attempt to
 restore that portion of the patent term that was dedicated to the public to secure
 the grant of the original patent would be contrary to this recapture principle.
 Finally, applicants have the opportunity to challenge the need for a terminal
 disclaimer during the prosecution of the application that issues as a patent.
 “Reissue is not a substitute for Patent Office appeal procedures.” Ball
 Corp. v. United States, 729 F.2d 1429, 1435, 221 USPQ 289, 293 (Fed.
 Cir. 1984). Where applicants did not challenge the propriety of the examiner’s
 nonstatutory double patenting rejection, but filed a terminal disclaimer to avoid the
 rejection, the filing of the terminal disclaimer did not constitute error within the
 meaning of 35
 U.S.C. 251 . Ex parte Anthony, 230 USPQ 467
 (Bd. App. 1982), aff’d, No. 84-1357 (Fed. Cir. June 14, 1985). In
 In re Dinsmore, 757 F.3d 1343, 111 USPQ2d 1229 (Fed. Cir.
 2014), the Federal Circuit held that the filing of a terminal disclaimer to obviate a
 double patenting rejection over a prior patent, when the prior patent and the patent
 sought to be reissued were never commonly owned, was not an error within the meaning
 of the reissue statute. In rejecting applicants' argument, the
 Dinsmore court noted that applicants had not shown a mistaken
 belief that the two patents at issue were commonly owned, and stated that the
 applicants were ultimately seeking to revise a choice they made, not to remedy the
 result of a mistaken belief.
 

 Finally, the nullification of a recorded terminal disclaimer would
 not be appropriate in reexamination, inter partes review, post
 grant review, and covered business method review proceedings. There are statutory
 prohibitions in 35
 U.S.C. 305 and pre-AIA 35 U.S.C. 314 ,
 35 U.S.C.
 316 , and 35 U.S.C. 326 against enlarging
 the scope of a claim during reexamination, inter partes review,
 post grant review, and covered business method review proceedings. As noted by the
 Board in Anthony, supra, if a terminal disclaimer was nullified, “claims would be
 able to be sued upon for a longer period than would the claims of the original
 patent. Therefore, the vertical scope, as opposed to the horizontal scope (where the
 subject matter is enlarged), would be enlarged.” Id. at 470.
 

 Accordingly, after issuance of a patent, a request to replace or
 remove a previously recorded terminal disclaimer will not be addressed on the merits.
 Where a terminal disclaimer was submitted to overcome a nonstatutory double patenting
 rejection (made during prosecution of an application which has now issued as a
 patent), and one or more patent or application numbers for the patent(s) or
 application(s) being disclaimed in the terminal disclaimer were in error, the patent
 owner may file a paper explaining the error(s) and requesting that the explanation be
 included in the file history and its request acknowledged. A patent owner may file
 additional terminal disclaimer(s) disclaiming the correct patent(s) or application(s)
 accompanied by the fee for such disclaimer(s) for processing by the Office. See
 subsection IV above. Similarly, if a terminal disclaimer has an error in the naming
 of the patent owner(s) or applicant, the patent owner may file a paper explaining the
 error(s) and requesting that the explanation be included in the file history. The
 patent owner can also request acknowledgement of the paper. A patent owner may also
 file additional terminal disclaimer(s) naming the correct owner(s) or applicant(s),
 accompanied by the fee for such disclaimer(s), for processing by the Office. 
 

 IX. TERMINAL DISCLAIMER FORMS The following are forms which may be used when filing a
 terminal disclaimer.
 

 Forms PTO/AIA/25 and PTO/AIA/26 may be used when filing a
 terminal disclaimer in an application where the application in which the terminal
 disclaimer is submitted was filed on or after September 16, 2012. Forms PTO/SB/25 and
 PTO/SB/26 may be used when filing a terminal disclaimer in an application where the
 application in which the terminal disclaimer is submitted was filed before September 16,
 2012.
 

 Forms PTO/SB/25a and PTO/SB/26a may be used when filing a
 terminal disclaimer in a patent. 
 

 

 

 

 

 

 

 

 

 

 

 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1400.01-Introduction 

 1401-Reissue 

 1402-Grounds for Filing 

 1403-Diligence in Filing 

 1404-Submission of Papers Where Reissue Patent Is in Litigation 

 1405-Reissue and Patent Term 

 1406-Citation and Consideration of References Cited in Original Patent 

 1407-1409-[Reserved] 

 1410-Content of Reissue Application 
 1410.01-Reissue Applicant and Inventor's Oath or Declaration 

 1410.02-Assignee Consent to the Reissue 

 
 

 1411-Form of Specification 
 1411.01-Certificate of Correction or Disclaimer in Original Patent 

 1411.02-New Matter 

 
 

 1412-Content of Claims 
 1412.01-Reissue Claims Must Be for Same General Invention 

 1412.02-Recapture of Canceled Subject Matter 

 1412.03-Broadening Reissue Claims 

 1412.04-Correction of Inventorship By Reissue 

 1412.05-Correction of Inventorship in a Broadening Reissue Application 

 
 

 1413-Drawings 

 1414-Content of Reissue Oath/Declaration 
 1414.01-Reissue Oath or Declaration in Reissue Application Filed On or After September 16, 2012 

 1414.02-Reissue Oath or Declaration in Reissue Application Filed Before September 16, 2012 

 1414.03-Supplemental Reissue Oath/Declaration 

 
 

 1415-Reissue Application and Issue Fees 
 1415.01-Maintenance Fees on the Original Patent 

 
 

 1416-No Physical Surrender of Original Patent 

 1417-Claim for Priority Under 35 U.S.C. 119(a)-(d) 

 1418-Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known To Be Material to Patentability 

 1419-1429-[Reserved] 

 1430-Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette 

 1431-1439-[Reserved] 

 1440-Examination of Reissue Application 

 1441-Two-Month Delay Period 
 1441.01-Protest and Pre-issuance Submission in Reissue Applications 

 
 

 1442-Special Status 
 1442.01-Litigation-Related or PTAB Trial-Related Reissues 

 1442.02-Concurrent Litigation or Trial Before the Patent Trial and Appeal Board 

 1442.03-Litigation Stayed 

 1442.04-Litigation Involving Patent 

 1442.05-Court Ordered Filing of Reissue Application 

 
 

 1443-Initial Examiner Review 

 1444-Review of Reissue Oath/Declaration 

 1445-Reissue Application Examined in Same Manner as Original Application 

 1446-1447-[Reserved] 

 1448-Fraud, Inequitable Conduct, or Duty of Disclosure Issues 

 1449-Protest Filed in Reissue Where Patent Is in Interference or Contested Case 
 1449.01-Concurrent Office Proceedings 

 1449.02-Interference in Reissue 

 1449.03-Reissue Application in Derivation Proceeding 

 
 

 1450-Restriction and Election of Species Made in Reissue Application 

 1451-Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending 

 1452-Request for Continued Examination of Reissue Application 

 1453-Amendments to Reissue Applications 

 1454-Appeal Brief 

 1455-Allowance and Issue 

 1456-Reissue Review 

 1457-Design Reissue Applications and Patents 

 1458-1459-[Reserved] 

 1460-Effect of Reissue 

 1461-1469-[Reserved] 

 1470-Public Access to Reissue Applications 

 1471-1479-[Reserved] 

 1480-Certificates of Correction — Office Mistake 
 1480.01-Expedited Issuance of Certificates of Correction - Error Attributable to Office 

 
 

 1481-Certificates of Correction - Applicant’s Mistake 
 1481.01-Correction of Assignees’ Names 

 1481.02-Correction of Named Inventor 

 1481.03-Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits 

 
 

 1482-1484-[Reserved] 

 1485-Handling of Request for Certificates of Correction 

 1486-1489-[Reserved] 

 1490-Disclaimers 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:50:35