A Terminal Disclaimer is a document filed with the USPTO to resolve conflicts between different patents or a patent and prior art. Check out our blog to learn more about terminal disclaimer’s requirements and restrictions.
A Terminal Disclaimer is a document filed with the US Patent and Trademark Office (USPTO) in which the owner of a patent agrees to dedicate any rights that they have in the patent to the public after a certain period of time has passed. Terminal Disclaimers are used in certain circumstances to resolve conflicts between different patents that claim the same invention, or between a patent and a prior art reference.
A Terminal Disclaimer is filed in order to overcome a patent office rejection that cites a prior patent or published application as prior art. The prior art may prevent the grant of a patent or limit the claims in a granted patent to exclude the prior art. In such a case, the Terminal Disclaimer is used to dedicate the terminal portion of the patent term to the public in order to resolve the conflict. This means that after the terminal period has expired, the public is free to practice the invention covered by the patent without fear of infringing the patent.
In general, a Terminal Disclaimer is used when an inventor wants to obtain a patent on an invention that is similar to a previously patented invention, or when a patent owner wants to extend the life of their patent by claiming priority to an earlier filed application. In these situations, the Terminal Disclaimer allows the inventor or patent owner to obtain a patent, but only for the remaining term of the earlier patent.
The USPTO provides guidelines for filing a Terminal Disclaimer, including the information that must be included in the document. The Terminal Disclaimer must include the patent number of the earlier patent, the name of the inventor of the earlier patent, and the expiration date of the earlier patent. It must also include a statement that the patent owner is dedicating the terminal portion of the term of their patent to the public.
Terminal Disclaimers can also be used to resolve conflicts between different patents that claim the same invention. In this case, the Terminal Disclaimer allows both patents to coexist, with each having a different expiration date. This allows both inventors to continue to practice their invention, but with the understanding that after the terminal period has expired, the public is free to practice the invention covered by both patents.
There are some restrictions on the use of Terminal Disclaimers, including the requirement that the patent owner must own or control the earlier patent, and that the earlier patent must have a remaining term of at least three years. Additionally, Terminal Disclaimers cannot be used to resolve conflicts between a patent and a prior art reference, such as a publication or an expired patent.
Requirements of a Terminal Disclaimer
The requirements for a Terminal Disclaimer in the US include:
- The patent owner must own or control the earlier patent.
- The earlier patent must have a remaining term of at least three years.
- The Terminal Disclaimer must include the patent number of the earlier patent, the name of the inventor of the earlier patent, and the expiration date of the earlier patent.
- The Terminal Disclaimer must include a statement dedicating the terminal portion of the term of the patent to the public.
- The Terminal Disclaimer must be signed by the patent owner or their authorised representative.
- The Terminal Disclaimer must be filed with the US Patent and Trademark Office (USPTO) before the patent is granted or during its enforcement period.
Restrictions of a Terminal Disclaimer
The restrictions of a Terminal Disclaimer in the US include:
- Terminal Disclaimers cannot be used to resolve conflicts between a patent and a prior art reference, such as a publication or an expired patent.
- The earlier patent must have a remaining term of at least three years.
- The patent owner must own or control the earlier patent.
- The Terminal Disclaimer must be filed before the patent is granted or during its enforcement period.
- The Terminal Disclaimer affects only the remaining term of the patent and does not change the validity or enforceability of the earlier patent.
- The Terminal Disclaimer applies only to the specific patent for which it is filed and does not extend to any other patents or applications filed by the patent owner.
- The Terminal Disclaimer cannot be revoked or modified after it has been filed and approved by the USPTO.
Wrapping Up
A Terminal Disclaimer is a useful tool for resolving conflicts between different patents, or between a patent and a prior art reference. It allows inventors or patent owners to obtain a patent for their invention, but only for the remaining term of the earlier patent. By dedicating the terminal portion of the patent term to the public, the Terminal Disclaimer ensures that the public is free to practice the invention after the terminal period has expired. If you are seeking a patent and have concerns about prior art or conflicting patents, you may consider filing a Terminal Disclaimer to resolve these issues.
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