Maiorana, P.C.

Terminal Disclaimers?

What is a Terminal Disclaimer?

Chris: A terminal disclaimer is a document we prepare and file in a patent application where you overcome a rejection based on a second filing that potentially overlaps the first filing.

How do you get an overlap?

Chris: We had another interview where we talked about continuation practice. In that scenario you would file a second patent application to try to potentially broaden your claims. When you broaden the claims, the patent office doesn't necessarily want to give you two patents on what they think might be too similar of an idea. You can never have a patent on the exact same claim. That's why we broaden them a bit. They're making objections that these are too close, so we file the terminal disclaimer to obviate the rejection.

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Do you get penalized for a continuation?

Chris: I know it sounds funny because we had the other interview talking about the continuation practice; where it’s good to file a continuation. You may or may not have the very best claims in the first application and you may have had to come to a compromise with the examiner. So we file the continuation and when they're asking for this terminal disclaimer, it doesn't hurt you because the first application doesn't change. It has the same expiration date. This is specific to the second application. So the second application cannot have a longer expiration date than the original.

Do you keep your patent term adjustment?

Chris: You do. If the first case had a long patent term adjustment then the second case may not get that same PTA. It’s an issue and something to be aware of. If you have a long PTA in the first case, you might use some techniques to try to maintain a similarly long PTA in the second case. But the original patent still has the same term, so you're covered on that point.

Can you refuse to file a terminal disclaimer?

Chris: You can. The old school theory was, you're never going to win by arguing against the terminal disclaimer requirement. That's probably true for most cases, but if you make persuasive enough arguments, you can overcome that requirement the U.S. Patent Office gives you. We've been successful at traversing a terminal disclaimer requirement.

If you potentially win and not argue, then why not always argue?

Chris: Good point. It's mainly due to cost. The terminal disclaimer's easy to prepare and file. If the patent term adjustment isn't very long, you're not going to gain or lose anything. It depends on the overall cost. Remember, we're talking about the end of a patent term, so a lot of patents are useful at the beginning and not so much at the end. With certain businesses, the end is the most important. If you had a huge licensing deal on the table, getting an extra six months at the end might be something valuable.

It happens more in the pharmaceutical business. Not so much with the electronic business, because it moves fast. For instance, you probably can’t get an older iPhone to work anymore even if it didn't come out that long ago. In a technology like that, losing 6 months at the end of the patent term would probably not be that much of a detriment.

Any other downside?

Chris: One more thing that's not really so much a downside, but a requirement on the terminal disclaimer. There's a requirement that the assignee needs to be the same on both applications. You shouldn't be able to get two similar applications and file the terminal disclaimer and license one application to one part and another to different party and potentially have them in conflict with each other. We want one assignee to own both. That passes muster at the U.S. Patent Office.

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