PTO/AIA/26JRA Terminal Disclaimer (With Joint Research Agreement Enfor

Doc Code: DIST

Document Description: Terminal Disclaimer Filed

PTO/AIA/26JRA (XX-XX)

Approved for use through X/XX/XXXX. OMB 0651-0031

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE

Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.

TERMINAL DISCLAIMER (WITH JOINT RESEARCH AGREEMENT ENFORCEMENT PROVISION) TO OBVIATE A NONSTATUTORY DOUBLE PATENTING REJECTION OVER A REFERENCE PATENT
Application Number:	Docket Number (Optional):
First Named Inventor:	Filing Date:
Title of Invention:
Note: Filing of a terminal disclaimer does not obviate the requirement to respond to an outstanding Office action. To respond to a non-final action, a reply under 37 CFR 1.111 is required. To respond to a final action, a reply under 37 CFR 1.113 or a request for reconsideration is required. See MPEP §§ 706.07(e) and 714.13.
For each reference patent listed below, the applicant, ________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________, owner of __________ percent interest in the instant application hereby disclaims, except as provided below, the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of the reference patent, as the term of the reference patent is presently shortened by any terminal disclaimer. The applicant of the instant application waives the right to separately enforce the reference patent and any patent granted on the instant application. The applicant of the instant application hereby agrees that any patent granted on the instant application shall be enforceable only for and during such period that the reference patent and any patent granted on the instant application are not separately enforced. The waiver and this agreement run with any patent granted on the instant application and are binding upon the applicant of the instant application, its successors, or assigns. In making the above disclaimer, the applicant does not disclaim the terminal part of the statutory term of any patent granted on the instant application that would extend to the expiration date of the full statutory term of the reference patent, “as the term of the reference patent is presently shortened by any terminal disclaimer,” in the event that the reference patent later: expires for failure to pay a maintenance fee; is held unenforceable; is found invalid by a court of competent jurisdiction; is statutorily disclaimed in whole or terminally disclaimed under 37 CFR 1.321; has all claims canceled by a reexamination certificate; is reissued; or is in any manner terminated prior to the expiration of its full statutory term as presently shortened by any terminal disclaimer. Reference Patent Number ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________

I. Requirements to establish a joint research agreement (JRA) for each reference patent identified in this terminal disclaimer

A. Statement under 37 CFR 1.104(c)(4)(ii)(A) or 37 CFR 1.104(c)(5)(ii)(A) as applicable. Check either box 1 or 2.

Applicant hereby certifies that a statement (“JRA statement”) in accordance with 37 CFR 1.104(c)(4)(ii)(A) or 37 CFR 1.104(c)(5)(ii)(A)

1. was previously filed on _________________________.

2. is concurrently being submitted with this terminal disclaimer.

Note: For the requirements of the JRA statement, see either (1) 35 U.S.C. 102(c), 37 CFR 1.104(c)(4)(ii)(A) and MPEP 717.02(a)(II) if the

instant application is subject to the First-Inventor-to-File provision of the AIA; or (2) pre-AIA 35 U.S.C. 103(c)(2), 37 CFR

1.104(c)(5)(ii)(A), and MPEP 2146.02 if the instant application is subject to 35 U.S.C. 102 in effect on March 15, 2013.

Example of a statement under 37 CFR 37 CFR 1.104(c)(4)(ii)(A):

The subject matter of U.S. Patent No. XX,XXX,XXX [this is the reference identified in the terminal disclaimer] was

developed and the claimed invention of the instant application was made by or on behalf of one or more the parties to a joint

research agreement, within the meaning of 35 U.S.C. 100(h) and 37 CFR 1.9(e), that was in effect on or before the effective filing

date the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint

research agreement.

Example of a statement under 37 CFR 37 CFR 1.104(c)(5)(ii)(A):

The subject matter of U.S. Patent No. XX,XXX,XXX [this is the reference identified in the terminal disclaimer] was

developed and the claimed invention of the instant application was made by or on behalf of the parties to a joint research

agreement, within the meaning of 35 U.S.C. 100(h) and 37 CFR 1.9(e), which was in effect on or before the date the claimed

invention was made, and the claimed invention was made as a result of activities undertaken within the scope of the joint research

agreement.

B. Specification discloses parties to the JRA. See 37 CFR 1.104(c)(4)(ii)(B) or 37 CFR 1.104(c)(5)(ii)(B). Check either box 1, 2, or 3.

Applicant hereby certifies that the specification of the instant application

1. as filed discloses the names of the parties to the JRA.

2. was previously amended on ______________________ to disclose the names of the parties to the JRA.

3. is concurrently being amended to disclose the names of the parties to the JRA.

C. Fee in 37 CFR 1.17(i)(1) for amendment under 37 CFR 1.71(g)(1) to names parties to the JRA. Check either box 1, 2, or 3.

1. Applicant hereby certifies that the fee set forth in 37 CFR 1.17(i)(1) is not required because the specification as filed discloses

the names of the parties to the JRA, and no untimely amendment under 37 CFR 1.71(g)(1) was filed to name different or

additional parties to the JRA.

2. Applicant hereby certifies that the fee set forth in 37 CFR 1.17(i)(1) as required by 37 CFR 1.71(g)(2) for an untimely amendment

naming the parties to the JRA was paid on ______________________.

3. Applicant hereby certifies that the fee set forth in 37 CFR 1.17(i)(1) is not required because the amendment naming the parties to

the JRA was filed within one of the time periods set forth in 37 CFR 1.71(g)(2).

Note: A certificate of correction may be required if the amendment was filed after the date the issue fee was paid. See 37 CFR 1.71(g)(3).

II. Whether each reference patent identified in this terminal disclaimer is prior art. Check either box 1 or 2.

37 CFR 1.321(d) requires that the reference that the nonstatutory double patenting is based upon is not commonly owned and was

disqualified as prior art as set forth in either 37 CFR 1.104(c)(4)(ii) or (c)(5)(ii). Applicant hereby certifies that

1. each reference patent identified in this terminal disclaimer is not commonly owned and is prior art under 35 U.S.C. 102(a)(2) or

pre-AIA 35 U.S.C. 102(e), (f), or (g) before any prior art exceptions are considered.

2. at least one reference patent identified in this terminal disclaimer is NOT prior art under 35 U.S.C. 102(a)(2) or under pre-AIA 35

U.S.C. 102(e), (f), or (g) before any prior art exceptions are considered. A petition under 37 CFR 1.183 requesting waiver of

the prior art requirement in 37 CFR 1.321(d) is concurrently filed with this terminal disclaimer.

III. A terminal disclaimer fee is required for each terminal disclaimer filed. Check either box 1 or 2 below.

1. The terminal disclaimer fee under 37 CFR 1.20(d) is included.

2. The terminal disclaimer fee under 37 CFR 1.20(d) was previously paid.

NOTE: If the terminal disclaimer fee under 37 CFR 1.20(d) has been increased since the fee was previously paid, then applicant must pay the difference between the increased fee and the amount previously paid.

WARNING: Information on this form may become public. Credit card information should not
be included on this form. Provide credit card information and authorization on form PTO-2038.

IV. Authorization for this terminal disclaimer - Check either box 1 or 2 below.

1. The undersigned is the applicant. If the applicant is an assignee, the undersigned is authorized to act on behalf of the assignee.

2. The undersigned is an attorney or agent of record. Reg. No. _______________

I hereby acknowledge that any willful false statements made are punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.

__________________________________________________________ __________________________________

Signature Date

__________________________________________________________ __________________________________

Typed or printed name Telephone number

_______________________________________________________________________________________________

Title

NOTE: Submit multiple forms if more than one signature is required, see below.*

*Total of______forms are submitted.

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