Terminal Disclaimer to Obviate a Double Patenting Rejection Over a "Prior" Patent

Legal Form NumberAIA/26
CourtUnited States Patent and Trademark Office
SectionUnited States Patent and Trademark Office
Doc Code: PTO/AIA/26 (04-14)
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)
TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTING
REJECTION OVER A “PRIOR” PATENT
In re Application of:
Application No.:
Filed:
The applicant, _________________________________________, owner of ____________ percent interest in the instant application hereby
disclaims, except as provided below, the terminal part of the statutory term of any patent granted on the instant application which would extend
beyond the expiration date of the full statutory term of prior patent No. __________________ as the term of said prior patent is presently
shortened by any terminal disclaimer. The applicant hereby agrees that any patent so granted on the instant application shall be enforceable
only for and during such period that it and the prior patent are commonly owned. This agreement runs with any patent granted on the instant
application and is binding upon the grantee, its successors or assigns.
For:
In making the above disclaimer, the applicant does not disclaim the terminal part of the term of any patent granted on the instant application
that would extend to the expiration date of the full statutory term of the prior patent, “as the term of said prior patent is presently shortened by
any terminal disclaimer," in the event that said prior 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 presently shortened by any terminal disclaimer.
Check either box 1 or 2 below, if appropriate.
1. The undersigned is the applicant. If the applicant is an assignee, the undersigned is authorized to act on behalf of the assignee.
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.
2. The undersigned is an attorney or agent of record. Reg. No.___________________
_______________________________________________________________________ _____________________
Signature Date
______________________________________________________________________________________________
Typed or printed name
_______________________________
Telephone Number
Terminal disclaimer fee under 37 CFR 1.20(d) included.
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.
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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 1-800-PTO-9199 and select option 2.
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