What is the significance of the ‘common ownership’ requirement in terminal disclaimers?

The ‘common ownership’ requirement in terminal disclaimers is crucial for preventing improper timewise extension of patent rights. Key points include:

• It ensures that the disclaimed patent and the reference patent remain under common ownership for the entire term of the disclaimed patent.
• This prevents separate entities from enforcing the patents independently, which could effectively extend the monopoly beyond the intended patent term.
• If common ownership is not maintained, the disclaimed patent becomes unenforceable.

MPEP 804.02 states: “A terminal disclaimer filed to obviate a nonstatutory double patenting rejection is effective only with respect to the application identified in the disclaimer, unless by its terms it extends to continuing applications.” This underscores the importance of properly defining the scope of the common ownership agreement in the terminal disclaimer.

To learn more:

• common ownership
• terminal disclaimer
• patent rights
• enforceability