Preface
This brief note is not legal advice and is for educational purposes only.
Why am I getting a Terminal Disclaimer Request?
Most likely your current application is a continuation, continuation-in-part (CIP), or a divisional from an earlier parent patent application. Then again, it could be a closely related application for which you already have a granted patent. Briefly, what’s going on is the USPTO does not want you to extend your patent beyond 20 years from what they consider the earliest filed patent in what may be a string of applications. That is, they are requesting you to disclaim any term beyond the end of the earlier patent term (thus the name terminal disclaimer).
The USPTO considers your filed application and the other reference(s) patentably indistinct from your prior patent and does not want you extending the patent term beyond the referenced patent term. See 35 U.S.C. 253 and 37 CFR 1.321.
Now, for the terminal disclaimer request to be a valid one, there must be common ownership.
The effect of a terminal disclaimer is:
- It aligns the expiration dates of the earlier patent and any granted from the current application to the exact same date (that of the earlier patent).
- Since the expiration dates are now the same, it limits enforcement of any later granted patent.
- Once the terminal disclaimer is recorded (at the USPTO), it’s legally binding.
Note: If there later are assignments or licensing, it can get complicated quickly and some rights might be lost. Contact an attorney.
Conclusion
You should really contact your attorney if you receive a terminal disclaimer request.
