What Is a Terminal Disclaimer?

A terminal disclaimer is a type of limit on a patent. If an inventor has an invention he or she has a patent for, the inventor might make small changes to the invention and file a patent for the same invention with these changes. If the United States Patent and Trademark Office (USPTO) gives a second patent to the inventor, the second patent will have a terminal disclaimer attached.

The terminal disclaimer means the second patent expires when the first patent does. It also means the inventor can only enforce the second patent if he or she owns both patents. If the inventor sells the first patent, he or she can't enforce the second one.

Why Is a Terminal Disclaimer Important?

Usually, if you're an inventor you can't file a second patent on the same invention. That's called "obviousness-type double patenting." This is different from "same invention double patenting." That means a patent can't be filed twice on the same invention. The USPTO doesn't issue double patents because people would use them to extend an original patent's life. Filing a terminal disclaimer lets you patent small changes to your invention without filing that double patent.

What to Know About Double Patenting

Two kinds of double patents exist:

  • Statutory double patenting.
  • Non-statutory double patenting (also known as obvious double patenting)

A statutory double patent rejection means the patents have identical claims. Sometimes it's only part of the application. In this case, you can reword your application so the claims sound different.

The obvious double patents are trickier because they have very similar claims but not identical claims. For an obvious double patent rejection, you can file a terminal disclaimer. You can also change the claims. Your third choice is to hold it in abeyance, which means delaying a decision. You do this if you're facing prosecution, and you'll probably amend the application in the future.

Double patenting problems can come up during patent applications. They also come up after patents are issued. If a double patent makes it to court, thanks to an infringement case, usually the court says the double patent is invalid. But if you have a double patent, you can refile the patent as a "post-issuance terminal disclaimer."

You can find the specific words about double patenting in the Manual of Patent Examination and Procedure from the USPTO. Three major points come up if you're trying to figure out whether a patent should be rejected, thanks to obviousness-type double patenting.

  • A common inventor, owner, or research partnership has to link the original patent with the possible double patent.
  • One patent's information should make the other patent too obvious.
  • There can't be a Restriction Requirement, which made it necessary to do two applications. With a Restriction Requirement, the USPTO says a patent application includes claims for two inventions. The USPTO has the inventor file two separate applications instead of one. After that, you can't claim a double patent because the USPTO specifically asked for more than one application.

The sticky part comes when you consider damages. If someone infringed on your double patent, do you get paid damages? Technically, that double patent is invalid. You can't get damages on an invalid patent. However, the patent should have been a terminal disclaimer. This means you would have gotten damages. The court hasn't actually addressed this issue yet. Therefore, if you're facing it, you'll definitely need a quality lawyer.

Important Double Patent Cases

Though courts haven't ruled on double patents, a few cases are still important.

Tyco Healthcare v. C.R. Bard and Asyst Technologies v. Empak suggest you could get paid for a retroactive terminal disclaimer.

  • Tyco Healthcare was already in the summary judgment stage. Therefore, the judge didn't actually put information in the ruling. The defendants didn't think the terminal disclaimer should count. But the judge disagreed, saying the terminal disclaimer removed the issues caused by double patents. Since the problem with double patents is only extending a patent's life, the terminal disclaimer shouldn't be invalid in this case.
  • Ayst Technologies didn't decide about terminal disclaimers because the trial hadn't happened. But the court agreed with the plaintiff; the terminal disclaimer could be retroactive. That would mean the plaintiff could collect damages.

Otsuka Pharmaceutical Co. v. Sandoz, Inc. ruled the original patent doesn't have to be prior art. That means it could have been filed after the disputed patent. It also ruled that you consider claims to determine whether one patent has obvious variations of the other.

Reasons to Consider Using Terminal Disclaimer

It's easy to assume that courts will rule for the plaintiff in a case about double patenting and terminal disclaimers. However, you shouldn't bet on it. Instead of getting in the sticky situation of double patents, file terminal disclaimers from the beginning. That way you protect your work and don't risk losing any damages.

Reasons to Consider Not Using Terminal Disclaimer

Sometimes inventors might choose not to use terminal disclaimers. A patent from the USPTO only lasts for 20 years. For a court to say that a patent is invalid because of double patenting takes many specific steps.

If you want to extend the life of your patent past those 20 years, then filing a second patent and dealing with litigation later might be the better option. Your original patent will expire. However, the extra stuff you added in the later patent will not expire with it. Sometimes you'll want to take the gamble of proving that the two patents are different enough.

Hagenbuch V. Sonrai Systems

When you file terminal disclaimers, don't use extremely broad language. The case of Hagenbuch v. Sonrai Systems dealt with a patent that used very broad terms in a terminal disclaimer. Because the language said "any continuation of" the patent, all the continuing applications for the patent were tied to one terminal disclaimer.

Two applications come into question, which go by the nicknames the '179 application and the '531 application. The numbers refer to part of the patent application numbers.

The '179 application went to court. Hagenbuch filed a terminal disclaimer to remove the double patenting issues. Later, the '531 application, which was part of the '179 family, went to court. The court decided that because of the terminal disclaimer's broad language, it applied to all the continuing patents. Hagenbuch didn't think it should.

If Hagenbuch had used the USPTO's language, things would have gone differently. But the court ruled that Hagenbuch used his own language, which was broader. That language was what decided the day.

The America Invents Act

Since September 16, 2012, the America Invents Act (AIA) has limited who can file a terminal disclaimer. If your original patent application was filed before September 16, 2012, you can legally have someone else file the terminal disclaimer for you. But if your patent application was filed after September 16, 2012, only the original applicant can file a terminal disclaimer.

The only exception is lawyers and patent agents. If you list a lawyer or a patent agent in your first application, then one of those people can do your terminal disclaimer.

Say you got a patent from someone else and need a terminal disclaimer. You can change the applicant on the patent. This means you're allowed to file the terminal disclaimer. To do so:

  • Request to change the applicant. (37 CFR § 1.46(c))
  • Submit a corrected application listing that you're the new applicant. (37 CFR § 1.76)
  • Send in a document talking about how you got the patent application. (37 CFR § 3.73(c))

Get a new Power of Attorney when you're done, too.

AIA form 25 is for filing a terminal disclaimer when you have a pending application. AIA form 26 is for terminal disclaimers to already-issued patents.

Filing Patent Disclaimers

Patent disclaimers are ways for patent holders to give up some or all their rights to a patent. Along with terminal disclaimers, you can also file statutory disclaimers.

Statutory Disclaimers

In a statutory disclaimer, you can give up the rights to some or all of your patent. Usually, the disclaimer gives the patent up to the public. It's binding to the person who holds the patent and to anyone who might inherit the patent. To file a statutory disclaimer for an issued patent, you have to do a few things:

  • The patent holder or an attorney has to sign the disclaimer.
  • You have to show which claim or claims you want to disclaim. These claims have to be complete.
  • Explain how much of the patent you actually own (if you only own part of it, for example).
  • Pay a fee.

You can file a statutory disclaimer for a pending patent application, too. The steps are almost the same, except you're talking about a patent application and not a patent.

Terminal Disclaimers

Filing a terminal disclaimer to remove a double patent in a patent application or a patent re-examination takes several steps.

  • You must show which parts of the patent get the disclaimer.
  • You must talk about which parts of the patent application you own.
  • You must pay a fee.
  • You must have the patent applicant or an attorney sign the disclaimer.
  • You also need to state the terminal disclaimer only lasts for as long as the original patent.

You can also file a terminal disclaimer on a double patent that was disqualified because of prior art. You have to follow all the terminal disclaimer steps to do this. You also have to waive the rights to enforcing patents that were part of the original application but not part of the terminal disclaimer.

Patent Term Adjustment

People used to be able to play with the length of a patent's life when its term happened when the patent was granted. Now, patent length comes from the filing date, not the grant date. The double patent laws came into play because people were doing many continuing applications to make their patents last longer. Thanks to terminal disclaimer, all patents relating to an invention expire at the same time.

Now, the way people extend patent life is through Patent Term Adjustment (PTA). PTA makes patent terms longer if a patent is caught up in delays because of USPTO prosecution. Say you have a patent with an adjusted term, thanks to PTA. If you have a terminal disclaimer attached to that patent, PTA also extends the life of your terminal disclaimer. The reason? The two patents are connected because they have the same expiration date.

One issue is whether the USPTO's terminal disclaimer form would cut off a PTA issued for a terminal disclaimer patent. If your terminal disclaimer was stuck in court, and it got a PTA, would your original patent's expiration date affect your terminal disclaimer? To keep this from happening, you should probably modify your terminal disclaimer application to say the PTA wouldn't get cut short.

How Can You Extend Patent Term Adjustment?

You can extend the patent term adjustment by doing the following:

  • Put Off Filing a Terminal Disclaimer. When you're dealing with PTA and possible double patent issues, the USPTO will probably tell you to go ahead with a terminal disclaimer. Wait as long as possible to do this. Sometimes you can change the language in the possible double patent application. If that's possible, you didn't actually need the terminal disclaimer.
  • Combine Two or More Applications. You might have two applications that might be rejected because of double patenting. If one has a PTA extension, try putting the information from the other patent into the extended term patent. You have a better chance if it is the same person examining both applications.
  • Get Rid of an Application. If you can't combine your applications, you might think about getting rid of the one without the extension. You have to decide if the aspects the shorter application protects are more important than getting a longer patent term.

How to Figure Out if a Patent is Still Enforced

To find out if a patent is still enforced, do the following steps:

  • Visit Google Patents, the USPTO, or the EPO to find the patent. If you find a utility patent with a number under 5,000,000, it's expired.
  • Check the patent term. USPTO patents after June 8, 1995, have a 20-year term. Utility and Plant Patents from before June 7, 1978, had a 17-year term and are expired. Design patents from before May 13, 2015, have a 14-year term. Design patents from after that date have a 15-year term. Both those terms start with the patent issue date.
  • Check whether the patents are terminal disclaimers. If that's the case, then their terms are tied to another patent. Most terminal disclaimers go for the "full statutory term" of the original patent. But you might find one that uses a specific date instead. If the terminal disclaimer says both, go with the term of the original patent, not the date the terminal disclaimer says.
  • See if the term was ever extended. If a patent application was filed after May 29, 2000, patent office delays might have given those patents extensions. In January 2010, the Wyeth case stated the USPTO was calculating extensions incorrectly. This means patents from between August 2009 and March 2010 might have an additional adjustment. The patent holder would have had to file extra paperwork for this.
  • Some patents, such as foods and drugs, have special extensions. If FDA approval took up almost the entire patent term, some patents get an extension. Terminal disclaimers affect these special cases, too. Merck v. HI-TECH ruled that extensions are added on after terminal disclaimer dates. But that doesn't always happen, and sometimes terminal disclaimers aren't extended.
  • Did the court invalidate a patent? You might need a lawyer to help you figure this one out. A lawyer has access to case files through databases not available online.
  • Finally, check whether the Commissioner of Patents had an issued patent withdrawn. Also check whether utility patent fees have been paid on time.

Frequently Asked Questions

  • Do I Need a Lawyer to File a Terminal Disclaimer?

No. Inventors can file terminal disclaimers on their own. However, getting legal help is always a smart idea if you're facing litigation.

  • Should I Use the USPTO's Terminal Disclaimer Form as is?

Not necessarily. But if you want to alter it, always hire a lawyer to help you with the language.

  • How Do I File a Patent?

UpCounsel offers several resources for patent filing:

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