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"Disparaging" prior art does not automatically disclaim scope. Previously it was good practice to characterize prior art for its strengths and weaknesses - particularly weaknesses. Then some judges decided to read the specification into the claims and say that the the inventor must have meant to only claim less than was claimed. Another problem with ...


3

The PTO has used terminal disclaimers for a long time when a single entity is trying to obtain several patents that are very similar to one another. The terminal disclaimer typically links the term of a pending application to the term of another patent. Thus, the impact is that the patent term will be shortened. The usual patent term is 20 years from the ...


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The USPTO put out a working paper in June 2015 titled "The USPTO Historical Patent Data Files: Two centuries of invention". In it they state "Internal estimates suggest that 11.9% of patents granted in 2012 contain terminal disclaimers. This rate has increased from 3.4% in 1990; thus we expect this to become an increasing problem with respect to calculating ...


2

An actual non-statutory double patenting rejection can only be relative to an already issued patent. However a provisional non-statutory double patenting rejection can be issued based on a co-pending application. Often both applications will get such a rejection. If handled correctly, you would not end up with a terminal disclaimer based on a patent that ...


2

Yes, absolutely, as long as there is not a terminal disclaimer that ties the applications together. A terminal disclaimer might be required during patent prosecution to avoid a rejection based on double-patenting. Under a terminal disclaimer common ownership of the covered patents is required. Both must be sold together with the requirement that they stay ...


1

There are multiple ways to end up with two patents with claims that cover related subject matter. One is by filing two applications and the other is by having a continuation or divisional from a single parent or some more complicated filing relationship using more than one continuation or divisional. In the case of two applications they might or might not be ...


1

For anyone else who finds themselves in this situation, the following fixed it for me: file the terminal disclaimer and pay the fee submit an A.NE "Response after final action" documenting your oversight and confirming that you have now filed the terminal disclaimer call the examiner, point out that you have done steps 1 and 2, and apologize All this can ...


1

It is a practice of Patent office to give a provisional Non-statuary double patent rejection based on continuation of prior granted/ pending application, if the claims are not substantially different from those of the prior application. In order for a reply to an Office Action that includes a provisional non-statutory double patenting rejection to be ...


1

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-...


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Citing the relevant section of the MPEP: B. Between Copending Applications—Provisional Rejections An examiner may become aware of two or more copending applications that were filed by the same inventive entity, a different inventive entities having a common inventor, a common applicant, and/or a common owner/assignee, or that claim an invention resulting ...


1

A Terminal Disclaimer is a written statement by a patent owner stating that the owner has disclaimed, or renounced legal claim to, a period of a later-issued patent that would extend beyond the expiration of an earlier-issued patent. The terminal disclaimer avoids one type of double patenting rejection as long as both the patents are commonly owned. There ...


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