What is the impact of a terminal disclaimer on claiming benefit of a prior-filed application?
What is the impact of a terminal disclaimer on claiming benefit of a prior-filed application?
A terminal disclaimer can affect the ability to claim benefit of a prior-filed application. According to MPEP 211.01(b):
Any nonprovisional application claiming the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States must include a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications.
However, if a terminal disclaimer has been filed in the prior application, it may limit the ability to claim benefit. The MPEP states:
If the prior application has been published, the validity of the patent may be affected if the continuing application is not filed within one year of the publication date of the prior-filed application. See MPEP § 211.05 for more information on the effects of publication of patent applications.
It’s crucial to consider the implications of terminal disclaimers when claiming benefit, as they can affect patent term and validity.
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