What is a terminal disclaimer and when is it required for a petition to revive?
What is a terminal disclaimer and when is it required for a petition to revive? A terminal disclaimer is a legal document filed by a patent applicant or owner that limits the enforcement period of a patent. In the context of petitions to revive, it may be required under certain circumstances. The MPEP 711.03(c) states:…
Read MoreWhat are the requirements for disqualifying a patent or patent application publication under 37 CFR 1.131(c)?
To disqualify a U.S. patent or U.S. patent application publication as prior art under 37 CFR 1.131(c), the applicant or patent owner must submit two items: A terminal disclaimer: This must be in accordance with 37 CFR 1.321(c). An oath or declaration: This must state that: The application or patent under reexamination and the patent…
Read MoreHow does the MPEP address inventions made jointly by employees of different organizations?
The MPEP addresses inventions made jointly by employees of different organizations in MPEP 715.01(a). It states: ‘Where the reference and the application or patent under reexamination are commonly owned, and the inventions claimed in the application or patent under reexamination and in the reference are not identical but are not patentably distinct, a terminal disclaimer…
Read MoreCan an affidavit under MPEP 715.01(a) overcome a double patenting rejection?
An affidavit filed under MPEP 715.01(a) is primarily intended to overcome prior art rejections under 35 U.S.C. 102(e). However, it’s important to note that such an affidavit may not be sufficient to overcome a double patenting rejection. The MPEP states: ‘Note that subject matter which is prior art under 35 U.S.C. 102(f) or (g) is…
Read MoreWhat is the purpose of 37 CFR 1.131(c)?
37 CFR 1.131(c) provides a mechanism to disqualify certain prior art in patent applications or patents under reexamination. Specifically, it addresses situations where: A claim is rejected under 35 U.S.C. 103 (as in effect on March 15, 2013) The rejection is based on a U.S. patent or U.S. patent application publication that is not prior…
Read MoreCan an inventor use a 37 CFR 1.131(a) affidavit to overcome a rejection based on a commonly owned patent or application?
No, an inventor cannot use a 37 CFR 1.131(a) affidavit to overcome a rejection based on a commonly owned patent or application. This is because such references are not considered prior art that can be antedated. According to MPEP 715.01(a): “Where the reference is a U.S. patent or patent application publication of a common assignee…
Read MoreHow does a terminal disclaimer affect a divisional application?
A terminal disclaimer filed in a parent application can affect a divisional application in specific ways. According to MPEP 201.06: ‘The divisional application must be directed to subject matter described and claimed in the prior nonprovisional application.’ This means that if a terminal disclaimer was filed in the parent application, it may impact the divisional…
Read MoreWhat 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…
Read MoreWhat happens to terminal disclaimers in a divisional application?
Terminal disclaimers filed in a parent application do not automatically carry over to a divisional application. The MPEP 201.06 states: ‘A terminal disclaimer filed to obviate a nonstatutory double patenting rejection in a parent application does not carry over to a divisional application. The applicant filing the divisional application must determine whether a new terminal…
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