37 C.F.R. § 1.321

Statutory disclaimers, including terminal disclaimers

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(a) A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. The disclaimer, to be recorded in the Patent and Trademark Office, must:

(1) Be signed by the patentee, or an attorney or agent of record;

(2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation;

(3) State the present extent of patentee's ownership interest in the patent; and

(4) Be accompanied by the fee set forth in § 1.20(d).

(b) An applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:

(1) Be signed by the applicant or an attorney or agent of record;

(2) Specify the portion of the term of the patent being disclaimed;

(3) State the present extent of applicant's ownership interest in the patent to be granted; and

(4) Be accompanied by the fee set forth in § 1.20(d).

(c) A terminal disclaimer, when filed to obviate judicially created double patenting in a patent application or in a reexamination proceeding except as provided for in paragraph (d) of this section, must:

(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;

(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and

(3) Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.

(d) A terminal disclaimer, when filed in a patent application or in a reexamination proceeding to obviate double patenting based upon a patent or application that is not commonly owned but was disqualified as prior art as set forth in either § 1.104(c)(4)(ii) or (c)(5)(ii) as the result of activities undertaken within the scope of a joint research agreement, must:

(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;

(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or be signed in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and

(3) Include a provision waiving the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the patent or any patent granted on the application which formed the basis for the double patenting, and that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the patent, or any patent granted on the application, which formed the basis for the double patenting are not separately enforced.

[58 FR 54510, Oct. 22, 1993, as amended at 61 FR 42807, Aug. 19, 1996; 70 FR 1824, Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 77 FR 48822, Aug. 14, 2012; 78 FR 11059, Feb. 14, 2013]

Notes of Decisions

Cited in 54 cases (14 in the last 5 years), 1982–2026 · leading case: Simpleair, Inc. v. Google LLC, 884 F.3d 1160 (Fed. Cir. 2018).

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Simpleair, Inc. v. Google LLC, 884 F.3d 1160 (Fed. Cir. 2018). · cites it 3× “§ 253 (b), and also require the child patents to be "commonly owned with the application or patent which formed the basis" for the obviousness-type double patenting rejection, see 37 C.F.R. § 1.321 (c)(3). The child patents issued over the course of eight years between 2006 and…”

In Re Hubbell, 709 F.3d 1140 (Fed. Cir. 2013). · cites it 7× “at 944-48 (approving the common ownership requirement for terminal disclaimers set forth in 37 C.F.R. § 1.321 ). In reaching this conclusion, the court recognized the importance of preventing harassment of an alleged infringer by multiple assignees asserting essen- tially the…”

In re Ornum, 686 F.2d 937 (C.C.P.A. 1982). · cites it 7× “…Cir. 1924), discussed at § 9.03 [2] [d] supra. 365 F.2d 834 , 840 n.5, 150 USPQ 804 (C.C.P.A.1966). [53 CCPA 1565.] . 37 C.F.R. § 1.321 (b).”

Japanese Found. for Cancer Rsch. v. Lee, 773 F.3d 1300 (Fed. Cir. 2014). · cites it 5× “On October 11, 2011, the Foundation’s attorney of record responsible for the prosecution of the '187 patent filed a statutory disclaimer pursuant to 37 C.F.R. § 1.321 (a) with the PTO, disclaiming “the entire term of all claims in U.”

Vectra Fitness, Inc. v. Tnwk Corp. (Formerly Known as Pac. Fitness Corp.), 162 F.3d 1379 (Fed. Cir. 1999). · cites it 3× “See 37 C.F.R. § 1.321 (a) (1990) (“A notice of the disclaimer is published in the Official Gazette .”

Inre: Dinsmore, 757 F.3d 1343 (Fed. Cir. 2014). · cites it 5× “” As required by 37 C.F.R. § 1.321 (c) — which addresses terminal disclaimers “filed to obviate [a] judicially created double patenting” rejection — the applicants’ terminal disclaimer declares that “any patent so granted on the instant application shall be enforceable only for…”

Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed. Cir. 2003). “” 37 C.F.R. § 1.321 (c)(3) (2002) (emphasis added).”

Nicholas v. Perricone, M.D. v. Medicis Pharm. Corp., Defendant-Cross, 432 F.3d 1368 (Fed. Cir. 2005). “”); 37 CFR § 1.321 (a) (incorporating the language of § 253).”

Richard D. Albert v. Kevex Corp., Richard D. Albert v. Kevex Corp., 729 F.2d 757 (Fed. Cir. 1984). · cites it 2× “253 3 and 37 CFR 1.321 of claims 1, 2, and 3 of the Porter patent, at the same time informing the trial judge of the action it had taken.”

Rembrandt Wireless Tech., LP v. Samsung Elec. Co., 853 F.3d 1370 (Fed. Cir. 2017). “§ 253 (a) and 37 C.F.R. § 1.321 (a), disclaiming claim 40 in the U.”

Sanofi-Aventis U.S., LLC v. Fresenius Kabi USA, LLC, 933 F.3d 1367 (Fed. Cir. 2019). “14135-36; see 37 C.F.R. § 1.321 (a). Soon after the disclaimer, the district court entered a post-trial order reaching two conclusions relevant to this appeal.”

In Re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023). · cites it 2× “§ 253 and 37 C.F.R. § 1.321 . No terminal disclaimers were filed by Cellect, and the patents at issue have all expired, precluding any late filings of ter- minal disclaimers.”

Show all 54 citing cases →

— 37 C.F.R. § 1.321(a) — 4 cases

In re Ornum, 686 F.2d 937 (C.C.P.A. 1982). “…Cir. 1924), discussed at § 9.03 [2] [d] supra. 365 F.2d 834 , 840 n.5, 150 USPQ 804 (C.C.P.A.1966). [53 CCPA 1565.] . 37 C.F.R. § 1.321 (b).”

Ortho Pharm. Corp. v. Smith, 959 F.2d 936 (Fed. Cir. 1992).

Ortho Pharm. Corp. v. Herchel Smith & Am. Home Prods. Corp., Defendants/cross-Appellants. Wyeth-Ayerst Labs. v. Johnson & Johnson Corp., 959 F.2d 936 (Fed. Cir. 1992).

Glaxo Grp. Ltd. v. DRIT LP (Del. 2021).

— 37 C.F.R. § 1.321(b) — 3 cases

In re Ornum, 686 F.2d 937 (C.C.P.A. 1982). “…Cir. 1924), discussed at § 9.03 [2] [d] supra. 365 F.2d 834 , 840 n.5, 150 USPQ 804 (C.C.P.A.1966). [53 CCPA 1565.] . 37 C.F.R. § 1.321 (b).”

Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 424 F. Supp. 2d 1188 (C.D. Cal. 2006).

Ricoh v. Nashua Corp. (D.N.H. 1997).

— 37 C.F.R. § 1.321(c) — 1 case

Inre: Dinsmore, 757 F.3d 1343 (Fed. Cir. 2014). “” As required by 37 C.F.R. § 1.321 (c) — which addresses terminal disclaimers “filed to obviate [a] judicially created double patenting” rejection — the applicants’ terminal disclaimer declares that “any patent so granted on the instant application shall be enforceable only for…”

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