How does a terminal disclaimer affect a divisional application?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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 application as follows:

• Inheritance of Terminal Disclaimer: Generally, a terminal disclaimer filed in the parent application does not automatically apply to the divisional application.
• Potential Double Patenting: If the claims in the divisional application are not patentably distinct from those in the parent application, a new terminal disclaimer may be required in the divisional to overcome a double patenting rejection.
• Examination Considerations: Examiners will consider the relationship between the parent and divisional applications when determining if a terminal disclaimer is necessary.

It’s important to consult with a patent attorney or agent to understand the specific implications of terminal disclaimers on your divisional application, as each case can have unique considerations.