How does a terminal disclaimer affect patent term?
A terminal disclaimer affects the patent term by disclaiming the terminal part of the statutory term of a patent, which would extend beyond the expiration date of an earlier patent or application. This effectively shortens the enforceable term of the later patent to expire at the same time as the earlier patent. According to the…
Read MoreWhat is a terminal disclaimer and how does it affect double patenting rejections?
What is a terminal disclaimer and how does it affect double patenting rejections? A terminal disclaimer is a legal document filed by a patent applicant or owner to overcome a double patenting rejection. According to MPEP 804.02: “A terminal disclaimer filed to obviate a nonstatutory double patenting rejection is effective only with respect to the…
Read MoreWhat’s the difference between statutory and nonstatutory double patenting?
The main differences between statutory and nonstatutory double patenting are: Statutory double patenting: Based on 35 U.S.C. 171, it applies when identical designs with identical scope are claimed twice. It cannot be overcome by a terminal disclaimer. Nonstatutory double patenting: Based on judicial doctrine, it applies to designs with different appearances or differing scope that…
Read MoreWhat are the requirements for a proper terminal disclaimer?
A proper terminal disclaimer must: Disclaim the terminal part of the statutory term of any patent granted on the application State that the patent shall be enforceable only for and during the period that it is commonly owned with the application or patent which formed the basis for the rejection Be signed by the applicant…
Read MoreCan a patent owner request a reissue to extend the patent term?
Can a patent owner request a reissue to extend the patent term? No, a patent owner cannot use the reissue process to extend the patent term. The MPEP 1405 clearly states: “The maximum term of the original patent is fixed at the time the patent is granted. While the term may be subsequently shortened, e.g.,…
Read MoreHow does a reissue affect the patent term?
How does a reissue affect the patent term? A reissue does not extend or alter the original patent term. According to MPEP 1460: “The maximum term of the original patent is fixed at the time the patent is granted. While the term may be subsequently shortened, e.g., through filing of a terminal disclaimer, it cannot…
Read MoreHow can I overcome a nonstatutory double patenting rejection?
To overcome a nonstatutory double patenting rejection, you can file a terminal disclaimer. The MPEP states: A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly…
Read MoreHow can an applicant overcome a nonstatutory double patenting rejection for a generic claim?
An applicant can overcome a nonstatutory double patenting rejection for a generic claim by filing a terminal disclaimer. This is explicitly stated in MPEP 806.04(i): “Applicant may overcome such a rejection by filing a terminal disclaimer. See In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993); In re Braithwaite, 379…
Read MoreHow does the doctrine of obviousness-type double patenting affect rejoinder?
The doctrine of obviousness-type double patenting can affect rejoinder in patent applications, particularly when an applicant voluntarily presents related claims in separate applications. According to MPEP 821.04: “Where applicant voluntarily presents claims to the product and process, for example, in separate applications (i.e., no restriction requirement was made by the Office), and one of the…
Read MoreHow can a double patenting rejection be overcome?
A double patenting rejection can be overcome by: Filing a terminal disclaimer in accordance with 37 CFR 1.321(c) or (d) Amending or canceling claims to eliminate the double patenting issue Showing that the inventions are patentably distinct The MPEP states: Nonstatutory double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the…
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