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I managed to mess up and filed a terminal disclaimer shortly after the Examiner had already responded with a final office action. The Examiner made it clear in their response that the claims were allowable, and that all issues had been addressed except the non-statutory double patenting issue that the terminal disclaimer was meant to obviate.

So technically the patent is now in a condition for allowance.

AFCAP 2.0 doesn't apply, because I would need to amend a claim (and they're all fine).

Do I have to file an RCE purely because of this, or is there some other (cheaper) way to get the patent granted?

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For anyone else who finds themselves in this situation, the following fixed it for me:

  1. file the terminal disclaimer and pay the fee
  2. submit an A.NE "Response after final action" documenting your oversight and confirming that you have now filed the terminal disclaimer
  3. call the examiner, point out that you have done steps 1 and 2, and apologize

All this can be done at no cost (other than the terminal disclaimer, which you would have had to pay for anyway).

Within a couple of days, you should have a "Reasons for allowance" notification in the transaction history.

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There is provision for withdrawal of 'recorded terminal disclosure. May refer MPEP 1490 (Ref-1) para VII & VII.A under 37 CFR 1.182 (Ref-2). Application fee is USD400 (Ref-3) under section (f).

RCE will not nullify 'terminal disclaimer'.

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  • That's not really what my question was. I was supposed to file a terminal disclamer along with my response, but forgot to do so. The examiner would have allowed the application if I had, but instead I got a final rejection. I've now filed the terminal disclamer, so technically the application is ready for allowance.
    – Keir Finlow-Bates
    Jan 11, 2020 at 15:35
  • IMO, you may request for examiner's interview and apprise your position. In any case, you may submit 'terminal disclaimer', preferably through EFS-Web (no fee needed) and submit response to final rejection stating compliance of 'terminal disclaimer' to put your application in condition of allowance. That should serve your purpose.
    – AD Adhikary
    Jan 11, 2020 at 15:51
  • Sorry, again my mistake. If you have not submitted response to final rejection stating compliance of 'terminal disclaimer' to put your application in condition of allowance, it may not be considered suo motu by the examiner.
    – AD Adhikary
    Jan 11, 2020 at 16:00

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