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…

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What’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…

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How 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…

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How 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…

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How 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…

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How 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…

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How 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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