After AIA Only Applicant Can File Terminal Disclaimer

Author:  Stephanie M. Sanders

A terminal disclaimer may be filed in a pending patent application, or reexamination proceeding, in order to obviate a non-statutory double patenting rejection over a U.S. patent or application. Following passage of the America Invents Act (AIA), the U.S. Patent and Trademark Office (USPTO) made a change to its regulations concerning the party that may provide a terminal disclaimer. The change applies to applications filed on or after September 16, 2012.

The previous regulations, which still apply to applications filed before September 16, 2012, state in part that either “[a]n 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.” Pre-AIA 37 CFR § 1.321(b). The new regulations, which apply to applications filed on or after September 16, 2012, state in part that “[a]n applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted.” Post-AIA 37 CFR § 1.321(b). In other words, in an application filed after September 16, 2012, an assignee who is not the applicant cannot sign and file a terminal disclaimer. However, an attorney or patent agent of record in the application may sign a terminal disclaimer on behalf of the applicant. Post-AIA 37 CFR § 1.321(b)(1).

To be eligible to file a terminal disclaimer, an assignee (that is not already an applicant) must request to be designated as the applicant by filing three documents: (1) a request to change the applicant under 37 CFR § 1.46(c), (2) a [corrected] application data sheet (ADS) under 37 CFR § 1.76 specifying the new applicant information, and (3) a 37 CFR § 3.73(c) statement, which details how the assignee obtained title to the application. Manual of Patent Examining Procedure § 1490. The USPTO provides Form AIA/96 to make the § 3.73(c) statement. It is also recommended that the new assignee-applicant execute and file a new Power of Attorney.

In addition, USPTO Form AIA/25 may be used to file a terminal disclaimer to overcome a provisional double patenting rejection over a pending application, while Form AIA/26 may be used to file a terminal disclaimer to obviate double patenting rejections over an issued patent. All of these forms may be downloaded from the USPTO Internet site.

 

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