2025 Terminal Disclaimer forms CWS

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE

Patent Processing

0651-0031

2025

Background

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. 131 to examine an application for patent and, when appropriate, issue a patent. The USPTO is also required to publish patent applications, with certain exceptions, promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under Title 35, United States Code (“eighteen-month publication”). Certain situations may arise which require that additional information be supplied in order for the USPTO to further process the patent or application. The USPTO administers the statutes through various sections of the rules of practice in 37 CFR Part 1.

During the processing of an application for a patent, the applicant or applicant’s representative may submit additional information to the USPTO concerning the examination of a specific application. For example, the applicant or applicant’s representative may submit: information disclosure statements, petitions for extension of time, express abandonments of applications and petitions to revive abandoned applications, disclaimers, pre-appeal requests for review, petitions to make special, requests for expedited examination of design applications, requests for continued examination, requests to inspect, copy, and access patent applications, and certain transmittal forms.

The information in this collection is used by the USPTO to continue the processing of the patent or application to ensure that applicants are complying with the patent regulations and to aid in the prosecution of the application.

Under current practice, a patent applicant or patent owner may, in most instances, obviate nonstatutory double patenting by filing a terminal disclaimer meeting the requirements of 37 CFR 1.321(c) or (d). A terminal disclaimer will ensure that the term of the patent with the terminal disclaimer will not extend beyond the term of the patent forming the basis of the nonstatutory double patenting.

The USPTO seeks to add four new terminal disclaimer forms to this information collection. Terminal disclaimers are already approved under this control number as part of the information collection “Statutory Disclaimers.” This action adds forms to assist respondents with providing the information for various specific situations that may arise when terminal disclaimers are filed under 37 CFR 1.321(d). The four forms being added are:

• PTO/AIA/25JRA (Terminal Disclaimer (With Joint Research Agreement Enforcement Provision) to Obviate a Provisional Nonstatutory Double Patenting Rejection over a Reference Application)

• PTO/SB/25aJRA (Terminal Disclaimer (With Joint Research Agreement Enforcement Provision) in a Patent or Proceeding in View of a Reference Application)

• PTO/AIA/26JRA (Terminal Disclaimer (With Joint Research Agreement Enforcement Provision) to Obviate a Nonstatutory Double Patenting Rejection over a Reference Patent)

• PTO/SB/26aJRA (Terminal Disclaimer (With Joint Research Agreement Enforcement Provision) in a Patent or Proceeding in View of a Reference Patent)

Summary of Changes

Four new terminal disclaimer forms are being added to 0651-0031. The addition of these forms results in no burden increase to this collection.

Changes in Burden

0651-0031 revised burden is as follows:

• 2,435,597 annual responses (unchanged)

• 535,466 annual hourly burden (unchanged)

• $462,118,020 annual non-hourly burden costs (unchanged)