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37 CFR 1.321: Statutory disclaimers, including terminal disclaimers

Taken from the Ninth Edition of the MPEP, published in March 2014

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CFR Part Index
Part 1: Rules of Practice in Patent Cases
Subpart B - National Processing Provisions
Disclaimer

1.321    Statutory disclaimers, including terminal disclaimers.

[Editor Note: Para. (b) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]

  • (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 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 by the applicant or 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 the result of 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.

[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (c) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para (d) added, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; paras. (c) and (d) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para. (b) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; ; para.(d) introductory text revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]

[*The revisions to para. (b) effective Sept. 16, 2012 were applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.321 (pre-AIA) for the rule otherwise in effect.]