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:

• divisional application
• terminal disclaimer
• double patenting
• patent examination