A terminal disclaimer is a statement in which the patent applicant dedicates the ending part of the patent to the public so that all similar patents end on the same date. Put simply, the term of all patents which are similar to each other owned by the patent owner is coterminous. By doing so, it prevents the patent owner from obtaining patent protection for the invention longer than the 20 year statutory patent term.
When do you use a terminal disclaimer?
A terminal disclaimer is filed when you receive a nonstatutory double patenting rejection. A nonstatutory double patenting rejection typically occurs when you file a continuation patent application. For example, let’s assume that your base nonprovisional patent application was allowed. Before the grant of the base nonprovisional application, you filed a continuation patent application. The continuation patent application was filed including claims that are broader than the allowed claims of the nonprovisional patent application.
In this instance, you would receive a nonstatutory double patenting rejection. You are basically claiming similar inventions. Because of the potential for the continuation application to have a longer patent term compared to the first patent, you need to make the term of the continuation application and the base nonprovisional application to be coterminous. The terminal disclaimer disclaims any part of the term of the continuation patent application so that they are coterminous.
Why do you need to file a terminal disclaimer?
The term of a patent is 20 years from the filing date of the earliest filed nonprovisional patent application. The government does not want you to have more time than that to protect your invention. As such, they require that the patent applicant disclaim the latter portion of the second patent to be the same as the first patent. When the claims are similar (i.e., not patentably distinct), there’s no way around it.
When the claims are patentably distinct, the examiner cannot give you a nonstatutory double patenting rejection. By definition, claims that receive a restriction requirement are patentably distinct. For example, if the examiner gives you a restriction requirement based on method claims and apparatus claims, you can elect either the apparatus claims or the method claims for examination. The restriction requirement is a decision by the examiner that the claims are independent and distinct. When you file the continuation application to seek protection for the nonelected claims, the examiner cannot give you a nonstatutory double patenting rejection. The examiner already decided that the nonelected claims are distinct from the elected claims.
How do you file a terminal disclaimer?
The terminal disclaimer can be filed as a paper document. However, they are typically filed electronically as an eTerminal Disclaimer.