Patent Terminal Disclaimers

If you are an inventor or patent owner, you may need to know what a patent terminal disclaimer is and how it affects your patent rights. In this blog post, I’ll explain what a patent terminal disclaimer is, why it’s important, and the pros and cons of using it.

What is a patent terminal disclaimer?

A patent terminal disclaimer is a statement you make during or after grant of a patent that you are waiving the latter part of the term of a patent, or that you are giving the public notice. Terminal disclaimers are permitted by patent law.

The reason for a definitive patent exclusion is to prevent double patenting, that is, when two patents are granted for the same or a very similar thing. The USPTO does not accept double patenting because it would make your patent last longer than the legal limit of 20 years from the time you filed it.

 

A patent terminal disclaimer can help you overcome a USPTO examiner’s double patent problem. If you file a patent terminal disclaimer, you agree that your second patent will end upon the expiration of your first patent. You also agree to use your second patent only if you own both patents. If you sell your first patent, you cannot enforce the second.

Why is a patent terminal disclaimer important?

A patent terminal disclaimer is important as it can help you avoid losing your patent rights due to double patenting. If you have two related patents, someone who copies or competes with your invention can challenge your patents in court for double patenting. If the court finds your patents invalid because of double patenting, you may not be able to sue them or get money from them.

By filing a patent terminal disclaimer, you can prevent this by ensuring that your patents expire simultaneously and belong to the same owner. This way you can prevent your patent from lasting longer than the law allows and retain your exclusive rights to your invention.

 

What are the advantages and disadvantages of using a patent terminal disclaimer?

Some of the benefits are:

  • You can resolve a USPTO examiner’s duplicate patent issue and obtain a second patent for your invention or improvement.
  • You can prevent your invention from being copied by others who may be trying to obtain a similar or obvious version of your invention.
  • You can prevent the loss of your patent rights through double patenting in court.

Some of the disadvantages are:

  • Your second patent will expire earlier if you let it expire at the same time as your first patent.
  • It will be more difficult to sell or license your patents separately as you need both patents to use them.
  • You must pay a fee to file a patent terminal disclaimer with the USPTO.

 

How to file a patent terminal disclaimer?

The USPTO permits you to generate the terminal disclaimer automatically from its EFS web-portal.

Once the terminal disclaimer is generated, you will need to pay the statutory fee (now $180 for large businesses and $90 for small businesses).

 

Summary

A patent terminal disclaimer is a useful tool for inventors and patent owners who want to avoid duplicate patent problems and protect their patent rights. However, there are also some disadvantages that should be considered before submitting one. If you are unsure whether you need a patent terminal disclaimer or how to file one, you should speak to a patent attorney who can help you with your situation.