How 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 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.
To learn more:
Topics:
MPEP 200 - Types and Status of Application; Benefit and Priority,
Patent Law,
Patent Procedure