1485 Handling of Request for Certificates of Correction
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1490 Disclaimers
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(a) IN GENERAL.—Whenever a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing and recorded in the Patent and Trademark Office, and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.
(b) ADDITIONAL DISCLAIMER OR DEDICATION.—In the manner set forth in subsection (a), any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.
35 U.S.C. 253(a) corresponds to the provisions of pre-AIA 35 U.S.C. 253, first paragraph except that the first sentence of pre-AIA 35 U.S.C. 251 includes the phrase “without any deceptive intention” between “Whenever” and “a claim.”
- Effective September 16, 2012, AIA, amended 35 U.S.C. 253 to eliminate the “without any deceptive intention” clause.
A disclaimer is a statement filed by an owner (in part or in entirety) of a patent or of a patent to be granted (i.e., an application), in which said owner relinquishes certain legal rights to the patent.
- The owner of a patent or an application is the original inventor(s) who has/have not assigned away their rights or the assignee(s) of the original inventor(s), or a combination of the two.
- The patent or application is assigned by one assignment or by multiple assignments which establish a chain of title from the inventor(s) to the assignee(s).
There are two types of disclaimers: a statutory disclaimer and a terminal disclaimer.
- A statutory disclaimer is a statement in which a patent owner relinquishes legal rights to one or more claims of a patent.
- A terminal disclaimer is a statement in which a patentee or applicant disclaims or dedicates to the public the entire term or any terminal part of the term of a patent or patent to be granted (filed in an application).
I. STATUTORY DISCLAIMERS
The owner of a patent may disclaim a complete claim or claims of his or her patent.
A statutory disclaimer is a statement in which a patent owner relinquishes legal rights to one or more complete claims of a patent.
- A statutory disclaimer is not, however, a vehicle for adding or amending claims, because there is no provision for such in the statute nor the rules.
- Thus, claims of a patent cannot be disclaimed in favor of new claims to be added to the patent or an amendment to existing claims.
II. TERMINAL DISCLAIMERS
37 CFR 1.321 (a) and (b) also provide for the filing by a patentee or applicant of a terminal disclaimer which disclaims or dedicates to the public the entire term or any terminal part of the term of a patent or patent to be granted.
37 CFR 1.321(c) specifically provides for the filing of a terminal disclaimer in an application or a reexamination proceeding for the purpose of overcoming a nonstatutory double patenting rejection.
37 CFR 1.321(d) specifically provides for the filing of a terminal disclaimer in an application or a reexamination proceeding for the purpose of overcoming a nonstatutory double patenting rejection based on a U.S. patent or application that is not commonly owned but was disqualified as the result of activities undertaken within the scope of a joint research agreement.
37 CFR 1.321(a) provides for a patentee to terminally disclaim a patent, but does not specifically provide for terminal disclaimers with common ownership enforcement provisions or joint research agreement enforcement provisions to obviate any nonstatutory double patenting issues. For terminal disclaimers filed under 37 CFR 1.321(c) or (d) in patents not under reexamination, such terminal disclaimers typically will be reviewed by Office staff only to the extent necessary to determine whether the requirements of 37 CFR 1.321(a) are met.
III. SIGNING AND SUPPORTING A DISCLAIMER
(a) A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. The disclaimer, to be recorded in the Patent and Trademark Office, must:
(1) be signed by the patentee, or an attorney or agent of record;
(2) identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term, will be refused recordation;
(3) state the present extent of patentee’s ownership interest in the patent; and
(4) be accompanied by the fee set forth in § 1.20(d).
(b) An applicant or assignee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1) be signed:
(i) by the applicant, or
(ii) if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii) if there is an assignee of record of the entire interest, by such assignee, or
(iv) by an attorney or agent of record;(2) specify the portion of the term of the patent being disclaimed;
(3) state the present extent of applicant’s ownership interest in the patent to be granted; and
(4) be accompanied by the fee set forth in § 1.20(d).
(c) A terminal disclaimer, when filed to obviate judicially created double patenting in a patent application or in a reexamination proceeding except as provided for in paragraph (d) of this section, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
(3) Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.
(d) A terminal disclaimer, when filed in a patent application or in a reexamination proceeding to obviate double patenting based upon a patent or application that is not commonly owned but was disqualified as prior art as set forth in either § 1.104(c)(4)(ii) or (c)(5)(ii) as resulting from activities undertaken within the scope of a joint research agreement, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or be signed in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding;
(3) Include a provision waiving the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the patent or any patent granted on the application which formed the basis for the double patenting, and that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the patent, or any patent granted on the application, which formed the basis for the double patenting are not separately enforced.
A statutory disclaimer or a terminal disclaimer filed in a patent or a reexamination proceeding must be signed by either:
- the patentee (the assignee, the inventor(s) if the patent is not assigned, or the assignee and the inventors who have ownership interest if the patent is assigned-in-part), or
- an attorney or agent of record. A registered practitioner acting in a representative capacity is not permitted to sign the disclaimer. Where the attorney or agent of record signs the disclaimer, there is no need to comply with 37 CFR 3.73.
For a terminal disclaimer filed under 37 CFR 1.321(c) or (d) in a reexamination proceeding to obviate a nonstatutory double patenting rejection, the terminal disclaimer must be signed in accordance.
A. Disclaimer Filed in a Patent or Reexamination Proceeding
A disclaimer filed in a pending application that was filed on or after September 16, 2012 must be signed by the applicant or an attorney or agent of record.
The word “applicant,” in this context, refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in 37 CFR 1.43, 1.45, or 1.46.
- Under 37 CFR 1.43, “applicant” refers to the legal representative of a deceased or legally incapacitated inventor.
Under 37 CFR 1.45, “applicant” refers to the inventors; if fewer than all joint inventors are applying for a patent as provided in 37 CFR 1.45, the phrase “the applicant” means the joint inventors who are applying for the patent without the omitted inventor(s).
Under 37 CFR 1.46, “applicant” refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under 37 CFR 1.46 and not the inventor.
The disclaimer may also be filed by an attorney or agent of record (a registered practitioner acting in a representative capacity under 37 CFR 1.34 is not permitted to sign the disclaimer).
- Where the attorney or agent of record signs the disclaimer, there is no need to comply with 37 CFR 3.73.
B. Terminal Disclaimer in an Application
The owner of the patent or application can sign a disclaimer, and a person empowered by the owner to sign the disclaimer can also sign it.
A disclaimer filed in an application must be signed by:
- the applicant where the application has not been assigned,
- the applicant and the assignee where each owns a part interest in the application,
- the assignee where assignee owns the entire interest in the application, or
- an attorney or agent of record.
In order to comply with pre-AIA 37 CFR 3.73(b), the assignee’s ownership interest must be established by:
- filing in the application or patent evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11, or
- specifying in the record of the application or patent where such evidence is recorded in the Office (e.g., reel and frame number, etc.).
- The submission with respect to pre-AIA 37 CFR 3.73(b) to establish ownership must be signed by a party authorized to act on behalf of the assignee.
IV. PROCESSING IN CERTIFICATE OF CORRECTION BRANCH
The Certificates of Correction Branch is responsible for the processing of all statutory disclaimers and all terminal disclaimers, except for terminal disclaimers filed in a pending application or reexamination proceeding. This processing involves:
- (A) Determining the compliance of the disclaimer ;
- (B) Notifying applicant or patentee when the disclaimer is not acceptable;
- (C) Recording the disclaimers in the record of the application file;
- (D) Providing the statutory disclaimer data and terminal disclaimer data (when the terminal disclaimer is filed in a patent) for printing in the Official Gazette; and
- (E) Providing a certificate of correction for patents when the terminal disclaimer was entered during the pendency of the application but the statement indicating that the patent is subject to a terminal disclaimer was not printed on the title page of the patent and/or the asterisk associated with the statement was not placed before the patent issue date in the right hand corner.
VI. OTHER MATTERS DIRECTED TO TERMINAL DISCLAIMERS
A. Requirements of Terminal Disclaimers
A proper terminal disclaimer must disclaim the terminal part of the statutory term of any patent granted on the application being examined which would extend beyond the expiration date of the full statutory term, shortened by any terminal disclaimer, of the patent (or of any patent granted on the application) to which the disclaimer is directed.
A terminal disclaimer filed to obviate a nonstatutory double patenting rejection based on a commonly owned patent or application must comply with the requirements of 37 CFR 1.321(c).
- The terminal disclaimer must state that any patent granted on the application being examined will be enforceable only for and during the period that it and the patent to which the disclaimer is directed or the patent granted on the application to which the disclaimer is directed are commonly owned.
A terminal disclaimer filed to obviate a nonstatutory double patenting rejection based on a non-commonly owned patent or application disqualified as a result of activities undertaken within the scope of a joint research agreement under 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3) must comply with 37 CFR 1.321(d), which sets forth signature, waiver rights and enforceability requirements.
The terminal disclaimer must include a provision:
- waiving the right to separately enforce (a) any patent granted on that application or the patent being reexamined and (b) the reference patent, or any patent granted on the reference application which formed the basis for the double patenting; and
- agreeing that any patent granted on that application or patent being reexamined shall be enforceable only for and during such period that said patent and the reference patent, or any patent granted on the reference application, which formed the basis for the double patenting are not separately enforced.
A terminal disclaimer must state that the agreement is to run with any patent granted on the application being examined and is to be binding upon the grantee, its successors, or assigns.
B. Effect of Disclaimers in Continuing Applications and in Reissues
A terminal disclaimer filed to obviate a nonstatutory double patenting rejection is effective only with respect to the application identified in the disclaimer unless by its terms it extends to continuing applications (in which case, applicant must file a copy of the disclaimer in the continuing application, to obviate any nonstatutory double patenting rejection to which the disclaimer is directed)
- For example, a terminal disclaimer filed in a parent application normally has no effect on a continuing application claiming filing date benefits of the parent application under 35 U.S.C. 120.
A terminal disclaimer filed in a parent application to obviate a nonstatutory double patenting rejection does, however, carry over to a continued prosecution application (CPA).
- The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed.
- If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182, along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA.
If applicant files a Request for Continued Examination (RCE) of an application under 37 CFR 1.114 (which can be filed on or after May 29, 2000 for an application filed on or after June 8, 1995), any terminal disclaimer present will continue to operate, because a new application has not been filed, but rather prosecution has been continued in the existing application.
An internal review form will be filled out to indicate that a terminal disclaimer has been filed for the patent (and will be effective for the patent as it will be reissued).
- Further, a copy of the terminal disclaimer should be placed into the reissue application file history by the Technology Center.
D. Two or More Copending Applications
If two (or more) pending applications are filed, in each of which a rejection of one claimed invention over the other on the ground of provisional nonstatutory double patenting (ODP) is proper, the provisional ODP rejection will be made in each application.
The phrase "earlier-filed" for determining in which application the terminal disclaimer need not be filed, is to be interpreted as follows:
- (A) Where there is no benefit claim in the two applications, the "earlier-filed" application is the one having the earlier actual filing date;
- (B)
- (1) Where at least one of the two applications is entitled to the benefit of a U.S. nonprovisional application under 35 U.S.C. 120, 121, or 365(c), the "earlier-filed" application is the one having the earliest date to which it is entitled benefit under 35 U.S.C. 120, 121, and/or 365(c).
- (2) Where two applications are entitled to the benefit of the same U.S. nonprovisional application under 35 U.S.C. 120, 121, or 365(c), if all the conflicting claims of one of the applications are not appropriately supported in the parent application (and therefore, not entitled to the benefit of the filing date of the parent application), while the conflicting claims of the other application are appropriately supported in the parent application (and therefore, entitled to the benefit of the filing date of the parent application), then the other application is the earlier-filed application. If none of the conflicting claims of either application are appropriately supported in the parent application, then the actual filing dates of the two applications govern.
- (C) A 35 U.S.C. 119(e) benefit is NOT taken into account in determining which is the "earlier-filed" application.
- (D) A foreign priority claim under 35 U.S.C. 119(a) is NOT taken into account in determining which is the "earlier-filed" application.
For items (C) and (D), it is to be noted that patent term does not begin from the date of the 35 U.S.C. 119 filing.
- Thus, if a patent # 1 has a 35 U.S.C. 119 filing date prior to patent # 2, but has a U.S. application filing date after patent # 2, then patent # 1 will expire later than patent # 2, and patent # 2 will be determined to be the “earlier-filed” application.
If both applications are filed on the same day, the provisional ODP rejection made in each of the applications should be maintained until applicant overcomes the rejections by either filing a reply showing that the claims subject to the provisional ODP rejections are patentably distinct or filing a terminal disclaimer in each of the pending applications.
If both applications are entitled to the benefit of the same U.S. nonprovisional application under 35 U.S.C. 120, 121, or 365(c) , and (B)(2) above does not apply, then the provisional ODP rejection made in each of the applications should be maintained until applicant overcomes the rejections by either filing a reply showing that the claims subject to the provisional ODP rejections are patentably distinct or filing a terminal disclaimer in each of the pending applications.
V. PROCESSING OF TERMINAL DISCLAIMER IN PENDING APPLICATION OR PROCEEDING
VI. OTHER MATTERS DIRECTED TO TERMINAL DISCLAIMERS
A. Requirements of Terminal Disclaimers
A proper terminal disclaimer must disclaim the terminal part of the statutory term of any patent granted on the application being examined (or the statutory term of the patent) which would extend beyond the expiration date of the full statutory term, shortened by any terminal disclaimer, of the patent (or of any patent granted on the application) to which the disclaimer is directed.
B. Effect of Terminal Disclaimers in Continuing Applications, Reexamination Proceedings, and Reissues
A terminal disclaimer filed to obviate a nonstatutory double patenting rejection is effective only with respect to the application or patent identified in the disclaimer unless by its terms it extends to continuing applications (in which case, applicant must file a copy of the disclaimer in the continuing application, to obviate any nonstatutory double patenting rejection to which the disclaimer is directed).
C. Terminal Disclaimer Identifies the Wrong Reference Application or Patent
In some instances a terminal disclaimer filed to obviate a nonstatutory double patenting rejection will identify the wrong reference application or patent (i.e., an application or patent which is not the basis for the double patenting rejection). In these instances, a replacement terminal disclaimer identifying the correct reference application or patent would be required by the examiner.
D. Two or More Copending Applications
An examiner may become aware of two or more copending applications that were filed by the same inventive entity, different inventive entities having a common inventor, a common applicant, and/or a common owner/assignee, or that claim an invention resulting from activities undertaken within the scope of a joint research agreement, that would raise an issue of double patenting if one of the applications became a patent.
1. Effective U.S. Filing Date
Where there are two or more applications with conflicting (i.e., patentably indistinct) claims, it may be necessary to determine which application has the earliest effective U.S. filing date, i.e., is the "earliest-filed application."
2. Provisional Nonstatutory Double Patenting Rejection is the Only Rejection Remaining in an Application
(a) Application Has Earliest Effective U.S. Filing Date
If a provisional nonstatutory double patenting rejection is the only rejection remaining in an application having the earliest effective U.S. filing date compared to the reference application(s), the examiner should withdraw the rejection in the application having the earliest effective U.S. filing date and permit that application to issue as a patent, thereby converting the "provisional" nonstatutory double patenting rejection in the other application(s) into a nonstatutory double patenting rejection when the application with the earliest U.S. effective filing date issues as a patent.
(b) Applications Have the Same Effective U.S. Filing Date
If both applications are actually filed on the same day, or are entitled to the same earliest effective filing date taking into account any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) with respect to the conflicting claims, the provisional nonstatutory double patenting rejection made in each application should be maintained until the rejection is overcome.
Applicant can overcome a provisional nonstatutory double patenting rejection in an application by either filing a reply showing that the claims subject to a provisional nonstatutory double patenting rejection are patentably distinct or filing a terminal disclaimer in the application.
(c) Application Has Later Effective U.S. Filing Date
If a provisional nonstatutory double patenting rejection is the only rejection remaining in an application, and that application has an effective U.S. filing date (taking into account any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) with respect to the conflicting claims) that is later than the effective U.S. filing date of at least one of the reference application(s), the rejection should be maintained until applicant overcomes the rejection.
(d) After Board Decision Not Reaching Provisional Nonstatutory Double Patenting Rejection
If a decision by the Patent Trial and Appeal Board does not include an opinion on a provisional nonstatutory double patenting rejection, and includes a reversal of all other grounds as to a claim rejected based on provisional nonstatutory double patenting and the applicant has not filed a proper terminal disclaimer, the examiner must act upon the provisional nonstatutory double patenting rejection.
VII. FORM PARAGRAPHS
VIII. WITHDRAWING A RECORDED TERMINAL DISCLAIMER
If timely requested, a recorded terminal disclaimer may be withdrawn before the application in which it is filed issues as a patent, or if a terminal disclaimer is filed in a reexamination proceeding, before the reexamination certificate issues. After a patent or reexamination certificate issues, a recorded terminal disclaimer will not be nullified.
A. Before Issuance Of Patent or Reexamination Certificate
While the filing and recordation of an unnecessary terminal disclaimer has been characterized as an “unhappy circumstance” there is no statutory prohibition against nullifying or otherwise canceling the effect of a recorded terminal disclaimer which was erroneously filed before the patent issues.
- Because the terminal disclaimer would not take effect until the patent is granted, and the public has not had the opportunity to rely on the terminal disclaimer, relief from this unhappy circumstance may be available by way of petition or by refiling the application (other than by refiling it as a CPA).
B. After Issuance Of Patent or Reexamination Certificate
The mechanisms to correct a patent — Certificate of Correction, reissue, reexamination, inter partes review, post grant review, and covered business method review — are not available to withdraw or otherwise nullify the effect of a recorded terminal disclaimer.
Certificates of Correction are available for the correction of an applicant’s mistake.
The nature of the mistake for which correction is sought is limited to those mistakes that are:
- of a clerical nature;
- of a typographical nature; or
- of a minor character.
The nature of the proposed correction is limited to those situations where the correction does not involve changes which would:
- constitute new matter, or
- require reexamination.
A mistake in filing a terminal disclaimer does not fall within any of the categories of mistake for which a certificate of correction of applicant’s mistake is permissible, and any attempt to remove or nullify the effect of the terminal disclaimer would typically require reconsideration of the circumstances under which it was filed.
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