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Topic: Terminal Disclaimer (Read 3329 times) |
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Mark McCormick
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I would appreciate some advice on the following scenario:
Have filed a patent application and it is rejected on the grounds of double patenting.
Only some of the claims are actually at fault here.
Can you file a terminal disclaimer for some of the claims in a patent but not for other claims?
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Wiscagent
Full Member
Posts: 843
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Re: Terminal Disclaimer
« Reply #1 on: Apr 19th, 2005, 12:57pm » |
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“A terminal disclaimer can be used to avoid an obviousness-type double patenting rejection. The disclaimer must include all claims of the rejected application even if only one claim is subject to the double patenting rejection.”
– from the PRG Patent Bar Prep Course
See CFR 1.321(b) and (c).
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Richard Tanzer
Patent Agent
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JimIvey
Moderator
Senior Member
 
Posts: 2584
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Re: Terminal Disclaimer
« Reply #2 on: Apr 26th, 2005, 9:18pm » |
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Thanks, Richard, for the precise authority. I believe you can split the case into two applications (cancel some claims and file them as a continuation). However, I doubt that will result in a net gain of patent term given the pendency of continuation applications. In short, it's feasible to do, but probably not practical.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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JS
Guest
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terminal disclaimer issue with a twist:
Company A and Company B are co-assignees on patent 1 and patent 2. As co-assignees, they both have rights to 100% of the invention. Patent 2 has a terminal disclaimer based on the expiration date of patent 1.
Normally with a terminal disclaimer, if the assignee re-assigns one of the patents, but not the other, then the other patent would not be enforceable. However, how does this play out if you have co-assignees? If company A re-assigned patent 2, would this render patent 1 unenforceable, even though there is still a common owner, company B?
Any thoughts, references, case law, etc would be appreciated.
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Isaac
Senior Member
Posts: 3472
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Re: Terminal Disclaimer
« Reply #4 on: Nov 20th, 2007, 5:11pm » |
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on Nov 20th, 2007, 4:28pm, JS wrote:| Any thoughts, references, case law, etc would be appreciated. |
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I'm not sure of the exact mechanics, but I really don't see any problem in principle with a terminal disclaimer in this situation. When two entities co-own a patent, it takes the cooperation of both parties to sue on the patent, so a terminal disclaimer restricting the ownership to two companies would not seem to create the problem where some poor infringer gets sued repeatedly by different owning entities.
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Isaac
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