Q) Terminal Disclaimer

by patentbar on August 1, 2008 · 41 comments

in Exam Questions

App assigned 40% to co. A, 40% to co. B, inventor retains 20%, who can sign terminal disclaimer?

See 37 CFR 1.321 and 1490. Longacre says that “A terminal disclaimer cannot be made of less than all the claims in a patent.” I would think they would all have to sign a terminal disclaimer.

{ 41 comments… read them below or add one }

1 mymrhNo Gravatar August 2, 2008 at 10:31 pm

In 37 CFR 1.321 and 1490:

The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1)be signed:
(i)by the applicant, or
(ii)if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii)if there is an assignee of record of the entire interest,
by such assignee, or
(iv)by an attorney or agent of record;

Since the question is related to a patent with divided interest, I believe only (i) and (iv) can sign terminal discliamer for this question. Please correct me if it is incorrect interpretation. Thanks.

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2 Art WilliamsNo Gravatar September 24, 2009 at 10:39 am

Can anyone help me to understand the operation meaning of “undivided part interest”? I’m assuming that divided part interest is equivalent to multiple undivided part interests.

Also, what is the operational meaning of a terminal disclaimer of a fractional interest? In the example above, if the inventor “retains a 20% interest”, and signs a terminal disclaimer, how does that impact the protection provided by the patent, (assuming for the sake of discussion that A and B do not sign the disclaimer).

Thanks very much, Art Williams

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3 BigBadVoodoDaddyNo Gravatar July 1, 2011 at 3:42 pm

undivided part interest applies when a corporation may assign some ownership to a sub division.
eg. if a corporation has 50 % ownership. Division A can own 25 % and the parent can own 25 %. In this case the part interest is divided. hence both corporation and its division A have to participate

4 HNo Gravatar March 31, 2011 at 7:50 pm

That’s correct. The statute is unambiguous.

If applicant retained entire interest –> he signs.
If applicant assign a partial interest –> partial assignees AND applicant signs.
If applicant assigns entire interest –> assignee signs.
OR attorney/agent OF RECORD can always sign.

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5 chrismcneitNo Gravatar August 5, 2008 at 9:53 pm

I wish I knew the answer to this too. This section does not conform to MPEP 324 which states (in part)
MPEP 324

In part:
If there is a single assignee of the entire right, title and interest in the patent application, 37 CFR 3.71(b)(1) provides that the single assignee (i.e., individual assignee) may act alone to conduct the prosecution of an application or other patent proceeding (upon complying with 37 CFR 3.73(b)).

If there is no assignee of the entire right, title and interest of the patent application, then two possibilities exist:

(A) The application has not been assigned, and ownership resides solely in the inventor(s) (i.e., the applicant(s)). In this situation, 37 CFR 3.71 does not apply, since there is no assignee, and the combination of all inventors is needed to conduct the prosecution of an application.

(B) The application has been assigned by at least one of the inventors, and there is thus at least one “partial assignee.” As defined in 37 CFR 3.71(b)(2), a partial assignee is any assignee of record who has less than the entire right, title and interest in the application. The application is owned by the combination of all partial assignees and all inventors who have not assigned away their right, title and interest in the application.

Where at least one inventor retains an ownership interest together with the partial assignee(s), the combination of all partial assignees and inventors retaining ownership interest is needed to conduct the prosecution of an application, unless one or more inventors have refused to join in the filing of the application and a petition under 37 CFR 1.47 has been granted. If a petition under 37 CFR 1.47 has been granted, then the assignee need only be the assignee of the entire interest of the 37 CFR 1.47 applicant to sign a power of attorney. See 37 CFR 1.32(b)(4). Where an applicant retains an ownership interest, the combination of all partial assignees and the applicant with the ownership interest is needed to conduct the prosecution of an application.

The above seems to indicate that all partial owners must sign. That makes more sense to me than 1490. It would not seem correct to me that a property right could be changed without out the consent of all interests. But I have read 1490 many times and it seems to conflict.

Also it would seem strange that the prosecution of an application would require authority greater than a terminal disclaimer.

Still, I have no answer.

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6 dgspambotNo Gravatar August 6, 2008 at 3:50 pm

Not sure where the confusion is. The terminal disclaimer must be signed by all parties in interest, or their attorney/agent of record. What part of that is wrong?

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7 JeremyNo Gravatar September 22, 2011 at 10:30 am

My take on this as well. Seems exceedingly clear to me. Somebody prove this wrong.

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8 chrismcneitNo Gravatar August 6, 2008 at 7:53 pm

37 CFR 1.321 and 1490 seem to indicate otherwise.

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9 dgspambotNo Gravatar August 7, 2008 at 8:10 pm

Maybe it does… I don’t think so. I think 37 CFR 1.321 just doesn’t cover the case where there is a divided interest.

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10 chrismcneitNo Gravatar August 7, 2008 at 8:45 pm

I agree it doesn’t cover it, but I was wondering what one does. I just want to know how to answer the question on the exam… MPEP 324 is compelling. I guess I will know when I see the answer options.

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11 mymrhNo Gravatar August 9, 2008 at 8:29 pm

Variation of this topic is on my today’s test. Identify who can’t sign TD. It is easier since all you need to do is find the one is not listed below.

The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1)be signed:
(i)by the applicant, or
(ii)if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii)if there is an assignee of record of the entire interest,
by such assignee, or
(iv)by an attorney or agent of record;

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12 patentbarNo Gravatar August 18, 2008 at 4:29 pm

question about Jones and Smith are joint inventors of invention and ABC has 40% interest and XYZ 40% interest who has to sign a terminal disclaimer (I chose the answer where all 4 have to sign (proper rep in the case of the companies))

2 electronic displays between ABC & XYZ corp-competitor files app after prior art publishes about display by inventing company.
2 inventors that have assigned invention to company X join to file a non-provisional application A w/ 3 inventors that have assigned to company Y. Later, 3 inventors from Y file new/continuing app B using A invention filing date. But Y inventors can’t locate other 2 company X inventors b/c no longer work at X to sign for app B. Is filing proper for app B w/o X-inventors?

mymrh Says:

In my first exam (a few months ago), I had this one “App assigned 40% to co. A, 40% to co. B, inventor retains 20%, who can sign terminal disclaimer?”

In my second exam, the variation of this topic is on my today’s test. Identify who can’t sign TD. It is easier since all you need to do is find the one is not listed below.

MPEP 1490
The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1)be signed:
(i)by the applicant, or
(ii)if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii)if there is an assignee of record of the entire interest,
by such assignee, or
(iv)by an attorney or agent of record;

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13 matt30No Gravatar May 10, 2009 at 12:13 pm

A got a version of this question yesterday on my exam.

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14 TexPatBarNo Gravatar May 10, 2009 at 12:45 pm

It would seem that if there is a divided interest then all of the partial assignees plus the inventor/applicant who hasn’t assigned, OR the attorney of record.

Thus if the question is who *can* sign in the above question then I think it would include the applicant, partial assignees, and the attorney. CFR 1.321

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15 SamNo Gravatar May 10, 2009 at 1:16 pm

matt30, what was your answer to the question

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16 matt30No Gravatar May 11, 2009 at 9:44 am

I chose all inventors plus one rep. from each and every assignee companies.
Looking at MPEP I am not sure about it now. MPEP’s wording is a little bit vague for me on the subject… However it makes sense, if you are giving up a right such as a patent term, my common sense says everybody with an interest in the patent should give up their own right.

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17 JohnNo Gravatar June 8, 2009 at 5:49 pm

I don’t understand the confusion. MPEP 1490 (under (ii)) and MPEP 324 align perfectly.

1490 (ii) states “if there is an assignee of record of an undivided part interest, BY THE APPLICANT AND SUCH ASSIGNEE”

this aligns perfectly with 324.

where’s the problem?

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18 SamNo Gravatar June 9, 2009 at 11:15 am

So John,

THe answer is all of the below may sign it, correct?
(i)by the applicant, or
(ii)if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii)if there is an assignee of record of the entire interest,
by such assignee, or
(iv)by an attorney or agent of record;

Thanks

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19 DoubleONo Gravatar June 9, 2009 at 12:02 pm

Not John, but anyway …

No, not all may sign, according to MPEP 1490 (*emphasis added*):

“… For a disclaimer to be accepted, it must be signed by the proper party as follows:

(A) A disclaimer filed in *an application* must be signed by

(1) the applicant *where the application has not been assigned*,

(2) the applicant and the assignee *where each owns a part interest in the application*,

(3) the assignee *where assignee owns the entire interest in the application*, or

(4) *an attorney or agent of record*.

(B) A disclaimer filed in *a patent or a reexamination proceeding* must be signed by either

(1) the patentee (the assignee, the inventor(s) if the patent is not assigned, or the assignee and the inventors if the patent is assigned-in-part), or

(2) an attorney or agent of record.”

Accordingly, in the above situation, the applicant/inventor may not sign on his own.

Instead, either the patent attorney or agent of record may sign, or the applicant AND the assignee(s) (i.e. whoever became, is or remains owner – those inventors who have not completely assigned their interest, and any partial assignees)

Hope this helps … :-)

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20 Art WilliamsNo Gravatar September 24, 2009 at 10:19 am

Can anyone help me to understand the distinction between statutory and nonstatutory double patenting?

Whether or not an application differs patentably from prior art is the output of prosecution, not the input. Am I missing something here?

Thanks very much, Art Williams

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21 toomuch23No Gravatar November 2, 2010 at 7:06 pm

Art, this is how I understand it:

terminal disclaimer (.321) = NONSTATUTORY-double patenting

STATUTORY double patenting 102(e) = conflicting claims (claims the same thing) are coextensive in scope = change the scope of the claims (can’t be fixed with TD)

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22 toomuch23No Gravatar November 3, 2010 at 10:42 pm

CORRECTION: terminal disclaimer may, and is, used to overcome patents that claim the same thing

23 toomuch23No Gravatar November 3, 2010 at 10:42 pm

If commonly owned

24 toomuch23No Gravatar November 3, 2010 at 11:02 pm

Don’t listen to me:) I have no idea what i am talking about. Problem 39 Oct. 2003 am, confused me! Can only overcome same claims by amending. Problem 39 is clearly incorrect

25 patenttipsNo Gravatar March 17, 2011 at 5:38 pm

Statutory means you can’t get over it.

If the claims are the same invention, you can’t get two patents to one invention, hence statutory.

Non-statutory means you can basically file a terminal disclaimer to get over it. Usually obviousness rejections.

26 DYNo Gravatar January 22, 2010 at 8:30 pm

According to the following, it seems that, at least, all owners with partial interest need to sign TD.

MPEP 1490

¶ 14.26 Does Not Comply With 37 CFR 1.321(b) and/or (c) “Sub-Heading” Only

The terminal disclaimer does not comply with 37 CFR 1.321(b) and/or (c) because:

[…]

¶ 14.26.06 Not Signed by All Owners

It was not signed by all owners and, therefore, supplemental terminal disclaimers are required from the remaining owners.

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27 SNo Gravatar June 5, 2010 at 6:56 am

I got a this.

Who can sign except:

Assignee with part interest.

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28 MattNo Gravatar August 8, 2010 at 12:13 am

In this case, the following would be acceptable per 1490:

1. The applicant
2. The applicant and [co A, co B, or inventor (moot)]
or
3. The attorney/agent

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29 studierNo Gravatar December 3, 2010 at 5:54 pm

I think the MPEP covers this question indirectly…

(ii)if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or

Here, there are just 2 assignees of part interests, thus, each would need to sign and the applicant. The goal of the rule appears to be to make sure that all parties that own some stake in the patent consent. Note that the mere applicant, or the mere attorney, probably wouldn’t suffice if assignments existed. That isn’t exactly clear from the rule, but it just makes sense to me. Otherwise, you can extinguish someone else’s property without their consent!

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30 JM70No Gravatar December 9, 2010 at 9:02 pm

Got this today, Chose 2 inventors to sign only, because there are 2 assignees, 40% each, so it’s “divided part interest”, not “undivided part interest”, i.e. inventors own one part of interest (20%), the other part (80%) is divided between 2 assignees.

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31 John HNo Gravatar February 1, 2011 at 5:15 pm

JM70, I think your understanding of “undivided part interest” is incorrect. A’s 40% “undivided part interest” means that A does not share any part of that 40% with anyone else. A “divided part interest” would be described by A.B, and C jointly owning 40% of the patent. An analogy can be found in real property law. An “undivided part interest” is where the owner does not share ownership of his/her part interest with another entity. (e.g. tenancy in common). This is contrasted with joint tenancy ownership, in which each owner jointly owns the property and is not able to independently dispose of the property. Here, A could sell or assign his 40% share of the patent without any interference from B or the inventor.

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32 patenttipsNo Gravatar March 17, 2011 at 5:42 pm

Good explanation. Have to think of patents as property.

I think everyone needs to sign in order to do something that affects the patent and since inventor assigned patent over to someone else, they aren’t the only owner, so seems like inventor can’t do it by themselves and everyone basically needs to get involved. Must cause fights!

33 LMNo Gravatar March 17, 2011 at 9:39 pm

Undivided part interest and divided part interest – in terms of real property law =

divided part interest is like partnership = each one has distinct share and upon death of one person/party it is inheriated by heirs of that personor as agreed between the partners

Undivided part interes is like joint tenancy = each one owns whole part. Ex. house in the name of husband and wife. They both owns house – it is undivided interest. One can not sell it without other person consent. There is no distinct share in the property unless divided by partition or something. And in the event of death, other joint owner owns entirely. No legal heirs of deceased owner owns by will or otherwise unless agreed between the parties otherwise.

LM

34 SarahNo Gravatar May 18, 2011 at 4:15 pm

Something involving disclaimers today. I believe it was who can sign for them (all inventors or all with interest).

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35 BobNo Gravatar August 3, 2011 at 2:06 am

Same as Sarah on 8/2/11

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36 maggieNo Gravatar November 15, 2011 at 2:29 pm

Terminal Disclaimer can be signed by:
(i)by the applicant, or
(ii)if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii)if there is an assignee of record of the entire interest,
by such assignee, or
(iv)by an attorney or agent of record;

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37 maggieNo Gravatar November 15, 2011 at 2:30 pm

Another Q was reported on Exam on How to Correct a terminal disclaimer:

Answer: Allow app, then applicant files reissue to correct terminal disclaimer

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38 jkpatentlawNo Gravatar June 12, 2012 at 8:57 pm

1490 discusses Replacement Terminal Disclaimers. It talks about if something is wrong specifically if it mentions the wrong patent then the examiner must issue a replacement TD and the applicant must pay a fee.

Can anyone comment on other corrections needing to be made to the TD as mentioned by Maggie and where it is discussed in ch. 1400 or elsewhere?

Thanks.

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39 KerstinNo Gravatar March 18, 2012 at 4:04 pm

I’m a bit confused still-so CAN an assignee sign? Inventors yes, but assignees? Yes or No?

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40 SolNo Gravatar April 7, 2012 at 3:48 am

everyone who owns any interet nees to sign

If all the shares of all signers add up to 100%, you get it. Otherwise, no.

One exception, attny/agent of record can sign. Why? because the attny/agent is representing 100% interest.

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41 MojoNo Gravatar September 23, 2012 at 6:06 pm

Saw this on 9/23/12

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