MPEP § 2762.01 — Duty of Disclosure When a Terminal Disclaimer is Filed During Patent Term Extension Proceedings (Annotated Rules)
§2762.01 Duty of Disclosure When a Terminal Disclaimer is Filed During Patent Term Extension Proceedings
This page consolidates and annotates all enforceable requirements under MPEP § 2762.01, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Duty of Disclosure When a Terminal Disclaimer is Filed During Patent Term Extension Proceedings
This section addresses Duty of Disclosure When a Terminal Disclaimer is Filed During Patent Term Extension Proceedings. Primary authority: 37 CFR 1.765 and 37 CFR 1.321. Contains: 1 requirement, 1 guidance statement, 2 permissions, and 3 other statements.
Key Rules
Effect of Terminal Disclaimer on Term
It is possible that during the processing of a patent term extension, the patent owner becomes aware of situations where the filing of a terminal disclaimer might be necessary or desired. For example, if patent infringement litigation has commenced and the accused infringer advances that the patent is invalid on the basis of nonstatutory obviousness type double patenting, then the patent owner might choose to file a terminal disclaimer to preempt the defense if the patent that is the basis for the nonstatutory obviousness type double patenting has not expired. Boehringer Ingelheim Int’l GmbH v. Barr Laboratories Inc., 592 F.3d 1340, 93 USPQ2d 1417, 1422-23 (Fed. Cir. 2010). When a terminal disclaimer is filed for a patent during the processing of an application for patent term extension, any required updates to information already of record should be made pursuant to 37 CFR 1.765. For example, if the calculation of term changes because the patent’s expiration date changes, then an updated calculation of the term should be submitted for the application for patent term extension via the USPTO patent electronic filing system. Patent owners can use the USPTO terminal disclaimer forms (e.g., forms PTO/SB/25a or PTO/SB/26a) available at www.uspto.gov. Alternatively, patent owners can draft and file a self-prepared terminal disclaimer that meets the requirements of 37 CFR 1.321. See MPEP § 1490.
It is possible that during the processing of a patent term extension, the patent owner becomes aware of situations where the filing of a terminal disclaimer might be necessary or desired. For example, if patent infringement litigation has commenced and the accused infringer advances that the patent is invalid on the basis of nonstatutory obviousness type double patenting, then the patent owner might choose to file a terminal disclaimer to preempt the defense if the patent that is the basis for the nonstatutory obviousness type double patenting has not expired. Boehringer Ingelheim Int’l GmbH v. Barr Laboratories Inc., 592 F.3d 1340, 93 USPQ2d 1417, 1422-23 (Fed. Cir. 2010). When a terminal disclaimer is filed for a patent during the processing of an application for patent term extension, any required updates to information already of record should be made pursuant to 37 CFR 1.765. For example, if the calculation of term changes because the patent’s expiration date changes, then an updated calculation of the term should be submitted for the application for patent term extension via the USPTO patent electronic filing system. Patent owners can use the USPTO terminal disclaimer forms (e.g., forms PTO/SB/25a or PTO/SB/26a) available at www.uspto.gov. Alternatively, patent owners can draft and file a self-prepared terminal disclaimer that meets the requirements of 37 CFR 1.321. See MPEP § 1490.
It is possible that during the processing of a patent term extension, the patent owner becomes aware of situations where the filing of a terminal disclaimer might be necessary or desired. For example, if patent infringement litigation has commenced and the accused infringer advances that the patent is invalid on the basis of nonstatutory obviousness type double patenting, then the patent owner might choose to file a terminal disclaimer to preempt the defense if the patent that is the basis for the nonstatutory obviousness type double patenting has not expired. Boehringer Ingelheim Int’l GmbH v. Barr Laboratories Inc., 592 F.3d 1340, 93 USPQ2d 1417, 1422-23 (Fed. Cir. 2010). When a terminal disclaimer is filed for a patent during the processing of an application for patent term extension, any required updates to information already of record should be made pursuant to 37 CFR 1.765. For example, if the calculation of term changes because the patent’s expiration date changes, then an updated calculation of the term should be submitted for the application for patent term extension via the USPTO patent electronic filing system. Patent owners can use the USPTO terminal disclaimer forms (e.g., forms PTO/SB/25a or PTO/SB/26a) available at www.uspto.gov. Alternatively, patent owners can draft and file a self-prepared terminal disclaimer that meets the requirements of 37 CFR 1.321. See MPEP § 1490.
Duty of Disclosure in PTE
It is possible that during the processing of a patent term extension, the patent owner becomes aware of situations where the filing of a terminal disclaimer might be necessary or desired. For example, if patent infringement litigation has commenced and the accused infringer advances that the patent is invalid on the basis of nonstatutory obviousness type double patenting, then the patent owner might choose to file a terminal disclaimer to preempt the defense if the patent that is the basis for the nonstatutory obviousness type double patenting has not expired. Boehringer Ingelheim Int’l GmbH v. Barr Laboratories Inc., 592 F.3d 1340, 93 USPQ2d 1417, 1422-23 (Fed. Cir. 2010). When a terminal disclaimer is filed for a patent during the processing of an application for patent term extension, any required updates to information already of record should be made pursuant to 37 CFR 1.765. For example, if the calculation of term changes because the patent’s expiration date changes, then an updated calculation of the term should be submitted for the application for patent term extension via the USPTO patent electronic filing system. Patent owners can use the USPTO terminal disclaimer forms (e.g., forms PTO/SB/25a or PTO/SB/26a) available at www.uspto.gov. Alternatively, patent owners can draft and file a self-prepared terminal disclaimer that meets the requirements of 37 CFR 1.321. See MPEP § 1490.
It is possible that during the processing of a patent term extension, the patent owner becomes aware of situations where the filing of a terminal disclaimer might be necessary or desired. For example, if patent infringement litigation has commenced and the accused infringer advances that the patent is invalid on the basis of nonstatutory obviousness type double patenting, then the patent owner might choose to file a terminal disclaimer to preempt the defense if the patent that is the basis for the nonstatutory obviousness type double patenting has not expired. Boehringer Ingelheim Int’l GmbH v. Barr Laboratories Inc., 592 F.3d 1340, 93 USPQ2d 1417, 1422-23 (Fed. Cir. 2010). When a terminal disclaimer is filed for a patent during the processing of an application for patent term extension, any required updates to information already of record should be made pursuant to 37 CFR 1.765. For example, if the calculation of term changes because the patent’s expiration date changes, then an updated calculation of the term should be submitted for the application for patent term extension via the USPTO patent electronic filing system. Patent owners can use the USPTO terminal disclaimer forms (e.g., forms PTO/SB/25a or PTO/SB/26a) available at www.uspto.gov. Alternatively, patent owners can draft and file a self-prepared terminal disclaimer that meets the requirements of 37 CFR 1.321. See MPEP § 1490.
Scope of Duty
It is possible that during the processing of a patent term extension, the patent owner becomes aware of situations where the filing of a terminal disclaimer might be necessary or desired. For example, if patent infringement litigation has commenced and the accused infringer advances that the patent is invalid on the basis of nonstatutory obviousness type double patenting, then the patent owner might choose to file a terminal disclaimer to preempt the defense if the patent that is the basis for the nonstatutory obviousness type double patenting has not expired. Boehringer Ingelheim Int’l GmbH v. Barr Laboratories Inc., 592 F.3d 1340, 93 USPQ2d 1417, 1422-23 (Fed. Cir. 2010). When a terminal disclaimer is filed for a patent during the processing of an application for patent term extension, any required updates to information already of record should be made pursuant to 37 CFR 1.765. For example, if the calculation of term changes because the patent’s expiration date changes, then an updated calculation of the term should be submitted for the application for patent term extension via the USPTO patent electronic filing system. Patent owners can use the USPTO terminal disclaimer forms (e.g., forms PTO/SB/25a or PTO/SB/26a) available at www.uspto.gov. Alternatively, patent owners can draft and file a self-prepared terminal disclaimer that meets the requirements of 37 CFR 1.321. See MPEP § 1490.
Determining Expiration Date
It is possible that during the processing of a patent term extension, the patent owner becomes aware of situations where the filing of a terminal disclaimer might be necessary or desired. For example, if patent infringement litigation has commenced and the accused infringer advances that the patent is invalid on the basis of nonstatutory obviousness type double patenting, then the patent owner might choose to file a terminal disclaimer to preempt the defense if the patent that is the basis for the nonstatutory obviousness type double patenting has not expired. Boehringer Ingelheim Int’l GmbH v. Barr Laboratories Inc., 592 F.3d 1340, 93 USPQ2d 1417, 1422-23 (Fed. Cir. 2010). When a terminal disclaimer is filed for a patent during the processing of an application for patent term extension, any required updates to information already of record should be made pursuant to 37 CFR 1.765. For example, if the calculation of term changes because the patent’s expiration date changes, then an updated calculation of the term should be submitted for the application for patent term extension via the USPTO patent electronic filing system. Patent owners can use the USPTO terminal disclaimer forms (e.g., forms PTO/SB/25a or PTO/SB/26a) available at www.uspto.gov. Alternatively, patent owners can draft and file a self-prepared terminal disclaimer that meets the requirements of 37 CFR 1.321. See MPEP § 1490.
Citations
| Primary topic | Citation |
|---|---|
| Determining Expiration Date Duty of Disclosure in PTE Effect of Terminal Disclaimer on Term Scope of Duty | 37 CFR § 1.321 |
| Determining Expiration Date Duty of Disclosure in PTE Effect of Terminal Disclaimer on Term Scope of Duty | 37 CFR § 1.765 |
| Determining Expiration Date Duty of Disclosure in PTE Effect of Terminal Disclaimer on Term Scope of Duty | MPEP § 1490 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2762.01 — Duty of Disclosure When a Terminal Disclaimer is Filed During Patent Term Extension Proceedings
Source: USPTO2762.01 Duty of Disclosure When a Terminal Disclaimer is Filed During Patent Term Extension Proceedings [R-01.2024]
It is possible that during the processing of a patent term extension, the patent owner becomes aware of situations where the filing of a terminal disclaimer might be necessary or desired. For example, if patent infringement litigation has commenced and the accused infringer advances that the patent is invalid on the basis of nonstatutory obviousness type double patenting, then the patent owner might choose to file a terminal disclaimer to preempt the defense if the patent that is the basis for the nonstatutory obviousness type double patenting has not expired. Boehringer Ingelheim Int’l GmbH v. Barr Laboratories Inc., 592 F.3d 1340, 93 USPQ2d 1417, 1422-23 (Fed. Cir. 2010). When a terminal disclaimer is filed for a patent during the processing of an application for patent term extension, any required updates to information already of record should be made pursuant to 37 CFR 1.765. For example, if the calculation of term changes because the patent’s expiration date changes, then an updated calculation of the term should be submitted for the application for patent term extension via the USPTO patent electronic filing system. Patent owners can use the USPTO terminal disclaimer forms (e.g., forms PTO/SB/25a or PTO/SB/26a) available at www.uspto.gov. Alternatively, patent owners can draft and file a self-prepared terminal disclaimer that meets the requirements of 37 CFR 1.321. See MPEP § 1490.