On the Terminal disclaimer in American Patent Law

China has become a major intellectual property country in the world, and the total amount of intellectual property rights has leapt to the forefront of the world, but China is still not a powerful intellectual property country. As a member of the intellectual property agency industry, we have the responsibility and obligation to contribute to building our country into a powerful intellectual property country. Below we will briefly introduce one of the more important "end-of-period waiver" Terminal disclaimer principles in U.S. patent applications.

1. What is the final waiver (Terminal disclaimer)?

According to the relevant provisions of the U.S. Patent Law, in the U.S. patent application, in order to prevent the applicant from continuously extending the patent protection period by continuing to apply for inventions and creations of the same subject, and to overcome the double authorization (double patenting), when the relevant claims and specifications of a patent application overlap with the applicant's own prior technology (which may be an authorized patent or a published patent application), the applicant can declare to waive the end protection period of the overlapping part of the later application and the prior technology by submitting the end-of-Terminal Disclaimer (hereinafter referred to as TD) (I .e. if the patent application is authorized, the patent protection period starts from the application date of the later application, but the rights and interests of the declared waiver part end to the protection period of the prior technology) in order to obtain a new patent.

Of course, if the claims of two patent applications are exactly the same, there is no way to overcome the problem of repeated authorization by submitting TD. Only when there is no significant patentability difference (patentably distinct) and two applications with different claims can the problem of repeated authorization be overcome by submitting TD.

2. Submitting TD must meet the following requirements:

1) The TD submitted requires the signature of the right owner (applicant or assignee) or the filing agent of the patent office;

(2) Clearly indicate the prior patent application information that is declared to be waived;

3) Explain the proportion of the patent and the owner of the application for the patent and the right to apply;

4) Pay a certain amount of official fees.

3. Issues requiring special attention in submitting TD:

1) For two or more applications, TD needs to be signed by a common patentee. The common patentee here refers:

a. Two or more applications have the same applicant, or a common inventor, or the same assignee, or the owner of the right to apply under the conditions of a joint research and development contract;

B. The applicants for the two applications may be different companies, but there must be a common owner (common ownership), such as the relationship between the subsidiary and the parent company. For example, Company A, the prior applicant, and Company B, the applicant in this case, are subsidiaries of Company C.

c. Two or more applications are made under their joint research agreement and are within the scope of this agreement.

2) If the applicant decides to submit the TD request after receiving the notice of the examination opinion of the Patent Office, it is also necessary to submit the reply text of the examination opinion at the same time, otherwise it will be deemed that the examination opinion has not been answered.

3) The patent applicable to TD will have a patent term equal to that of its previous patent and will no longer be subject to patent term adjustment (PTA), I .e., the patent protection period may be less than 20 years.

4) For patents applicable to TD, it will be noted on the front page of the patent: "This patent is subject to a terminal disclaimer at the end of the period (TD)".

Sourcehttp://www.lungtinsz.com/index.php?c=msg&id=419