PTO/SB/25aJRA Terminal Disclaimer (With Joint Research Agreement Enfor

Doc Code: DIST

Document Description: Terminal Disclaimer Filed

PTO/SB/25aJRA (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) IN A PATENT OR PROCEEDING IN VIEW OF A REFERENCE APPLICATION
Application/Control Number:	Filing Date:	Patent Number:
First Named Inventor:	Docket Number (Optional):
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 is required.
For each reference application listed below, the patentee, ________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________, owner of __________ percent interest in the instant patent hereby disclaims, except as provided below, the terminal part of the statutory term of the instant patent which would extend beyond the expiration date of the full statutory term of any patent granted on the reference application, as the term of any patent granted on the reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the reference application. The patentee waives the right to separately enforce the instant patent and any patent granted on the reference application. The patentee agrees that the instant patent shall be enforceable only for and during such period that the instant patent and any patent granted on the reference application are not separately enforced. The waiver and this agreement run with instant patent and are binding upon the patentee, its successors, or assigns. In making the above disclaimer, the patentee does not disclaim the terminal part of the statutory term of the instant patent that would extend to the expiration date of the full statutory term of any patent granted on the reference application, “as the term of any patent granted on the reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the reference application,” in the event that any such patent granted on the reference application: 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 shortened by any terminal disclaimer filed prior to its grant. Reference Application Number Filing Date ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________ ___________________________

I. Requirements to establish a joint research agreement (JRA) for each reference application 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.

Patentee 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 patent 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 patent 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. Application No. XX,XXX,XXX [this is the reference identified in the terminal disclaimer] was

developed and the claimed invention of the instant patent 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. Application No. XX,XXX,XXX [this is the reference identified in the terminal disclaimer] was

developed and the claimed invention of the instant patent 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.

Patentee hereby certifies that the specification of the instant patent

1. 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. Patentee 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. Patentee 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. Patentee 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 application 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). Patentee hereby certifies that

1. each reference application 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 application 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. Check either box 1, 2, or 3 below, as appropriate.

1. The current ownership was established by the filing of a statement under 37 CFR 3.73 during prosecution of the application that

issued as the instant patent.

2. The instant patent was issued from an application filed on or after September 16, 2012, and the current patent owner was the

applicant under 37 CFR 1.46.

3. A statement under 37 CFR 3.73 is attached herewith. Form PTO/SB/96 or PTO/AIA/96, as appropriate, may be used.

IV. 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.

V. Authorization for this terminal disclaimer - Check either box 1 or 2 below, if appropriate:

1. For submissions on behalf of a business/organization (e.g., corporation, partnership, university, government agency, etc.), the
undersigned is empowered to act on behalf of the business/organization.

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.

Privacy Act Statement

The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your submission of the attached form related to a patent application or patent. The United States Patent and Trademark Office (USPTO) collects the information in this record under authority of 35 U.S.C. 2. The USPTO’s system of records is used to manage all applicant and owner information including name, citizenship, residence, post office address, and other information with respect to inventors and their legal representatives pertaining to the applicant's/owner’s activities in connection with the invention for which a patent is sought or has been granted. The applicable Privacy Act System of Records Notice for the information collected in this form is COMMERCE/PAT-TM-7 Patent Application Files, available in the Federal Register at 78 FR 19243 (March 29, 2013), https://www.govinfo.gov/content/pkg/FR-2013-03-29/pdf/2013-07341.pdf.

Routine uses of the information in this record may include disclosure to: 1) law enforcement, in the event that the system of records indicates a violation or potential violation of law; 2) a federal, state, local, or international agency, in response to its request; 3) a contractor of the USPTO having need for the information in order to perform a contract; 4) the Department of Justice for determination of whether the Freedom of Information Act (FOIA) requires disclosure of the record; 5) a Member of Congress submitting a request involving an individual to whom the record pertains, when the individual has requested the Member’s assistance with respect to the subject matter of the record; 6) a court, magistrate, or administrative tribunal, in the course of presenting evidence, including disclosures to opposing counsel in the course of settlement negotiations; 7) the Administrator, General Services Administration (GSA), or their designee, during an inspection of records conducted by GSA under authority of 44 U.S.C. 2904 and 2906, in accordance with the GSA regulations and any other relevant (i.e., GSA or Commerce) directive, where such disclosure shall not be used to make determinations about individuals; 8) another federal agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C. 218(c)); 9) the Office of Personnel Management (OPM) for personnel research purposes; and 10) the Office of Management and Budget (OMB) for legislative coordination and clearance.

If you do not furnish the information requested on this form, the USPTO may not be able to process and/or examine your submission, which may result in termination of proceedings, abandonment of the application, and/or expiration of the patent.

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This collection of information is required by 37 CFR 1.321. The information is required to obtain or retain a benefit by the public, i.e., to prosecute a patent application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take XX minutes to complete, including gathering, preparing, and submitting the completed form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

If you need assistance in completing the form, call 1‐800‐PTO‐9199 and select option 2.