Terminal Disclaimer in a Patent or Proceeding in view of Another Patent

CourtUnited States Patent and Trademark Office, Patent Trial and Appeal Board
Legal Form NumberSB/26a
SectionUnited States Patent and Trademark Office
*Total of _____ forms are submitted.
 
PTO/SB/26a (02-14)
Approved for use through 05/31/2024. OMB 0651-0031
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
Docket Number (Optional)
Application/Control Number:
Filing Date:
First Named Inventor:
Patent No.:
The patentee, _____________________________________________, owner of __________ percent interest in the instant patent hereby
disclaims, except as provided below, the terminal part of the statutory term of the instant patent which would extend beyond the expiration
date of the full statutory term of patent No. ____________________ (the “reference patent”), as the term of said reference patent is presently
shortened by any terminal disclaimer. The patentee hereby agrees that the instant patent shall be enforceable only for and during such period
that the instant patent and the reference patent are commonly owned. This agreement runs with the instant patent and is binding upon the
grantee, its successors or assigns.
In making the above disclaimer, the patentee does not disclaim the terminal part of the instant patent that would extend to the expiration date
of the full statutory term of the reference patent, “as the term of said reference patent is presently shortened by any terminal disclaimer,” in
the event that said reference patent later: expires for failure to pay a maintenance fee; is held unenforceable; is found invalid by a court of
competent jurisdiction; is statutorily disclaimed in whole or terminally disclaimed under 37 CFR 1.321; has all claims canceled by a
reexamination certificate; is reissued; or is in any manner terminated prior to the expiration of its full statutory term as shortened by any
terminal disclaimer.
I. Check either box 1, 2, or 3 below, as appropriate, if there is an assignment:
1. The current ownership was established by the filing of a statement under 37 CFR 3.73 during prosecution of the application that
issued as the instant patent.
2. The instant patent was issued from an application filed on or after September 16, 2012, and the current patent owner was the
applicant under 37 CFR 1.46.
3. A statement under 37 CFR 3.73 is attached herewith. Form PTO/SB/96 or PTO/AIA/96, as appropriate, may be used.
II. Authorization for Terminal Disclaimer - Check either box 1 or 2 below, if appropriate:
I hereby acknowledge that any willful false statements made are punishable under 18 U.S.C. 1001 by fine or imprisonment of not
more than five (5) years, or both.
1. For submissions on behalf of a business/organization (e.g., corporation, partnership, university, government agency, etc.), the
undersigned is empowered to act on behalf of the business/organization.
2. The undersigned is an attorney or agent of record. Reg. No. _______________
__________________________________________________________ __________________________________
Signature Date
__________________________________________________________ __________________________________
Typed or printed name Telephone number
The terminal disclaimer fee under 37 CFR 1.20(d) is included.
NOTE: Submit multiple forms if more than one signature is required, see below.*
WARNING: Information on this form may become public. Credit card information should not
be included on this form. Provide credit card information and authorization on PTO-2038.
A Federal agency may not conduct or sponsor, and a person is not required to respond to, nor shall a person be subject to a penalty for failure to comply with an
information collection subject to the requirements of the Paperwork Reduction Act of 1995, unless the information collection has a currently valid OMB Control
Number. The OMB Control Number for this information collection is 0651-0031. Public burden for this form is estimated to average 12 minutes per response,
including the time for reviewing instructions, searching existing data sources, gathering and maintaining the data needed, and completing and reviewing the
information collection. Send comments regarding this burden estimate or any other aspect of this information collection, including suggestions for reducing this
burden to the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450 or email
InformationCollection@uspto.gov. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. If filing this completed form by mail, send to:
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
If you need assistance in completing the form, call 1800PTO9199 and select option 2.

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