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What happens when a terminal disclaimer is taken to a patent which itself is a continuation of a patent family that now has been sold? Only the latest member of the family is cited in the terminal disclaimer.

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What happens when a TD is taken to a patent which itself is a continuation of a patent family that now has been sold?

Per 35 USC 154 (c).1:

The term of a patent that is in force on or that results from an application filed before the date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act shall be the greater of the 20-year term as provided in subsection (a), or 17 years from grant, subject to any terminal disclaimers.

and per MPEP 2701 (I):

A patent granted on a continuation, divisional, or continuation-in-part application that was filed on or after June 8, 1995, will have a term which ends twenty years from the filing date of earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) regardless of whether the application for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c) was filed prior to June 8, 1995.

A non-provisional patent application which is a continuation of a continuation (a child application) will have a term of twenty years from the filing date of the first filed application that priority is claimed (the parent application). Thus the terminal disclaimer would be for a term 20 years from the filing date of the parent application.

Only the latest member of the family is cited in the TD.

This will not affect anything since the latest member would have the same term as the parent application and thus the term would be the same as if you had cited the parent application.

  • A terminal disclaimer also states that the two patents involved will always be commonly owned. – George White Oct 2 '18 at 17:37

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