37 CFR 1.321 - Statutory disclaimers, including terminal disclaimers

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253 practice notes
  • Changes To Implement Derivation Proceedings
    • United States
    • Federal Register September 11, 2012
    • September 11, 2012
    ...where a claim in a patent is overly broad. 37 CFR 1.291 provides for the protest against the issuance of a patent during examination. 37 CFR 1.321 provides for the disclaimer of a claim by a 37 CFR 1.501 and 1.502 provide for ex parte reexamination of patents. Under these rules, a person ma......
  • Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions
    • United States
    • Federal Register February 09, 2012
    • February 9, 2012
    ...where a claim in a patent is overly broad. 37 CFR 1.291 provides for the protest against the issuance of a patent during examination. 37 CFR 1.321 provides for the disclaimer of a claim by a 37 CFR 1.501 and 1.502 provide for ex parte reexamination of patents. Under these rules, a person ma......
  • Changes to Implement Inter Partes Review Proceedings
    • United States
    • Federal Register February 10, 2012
    • February 10, 2012
    ...where a claim in a patent is overly broad. 37 CFR 1.291 provides for the protest against the issuance of a patent during examination. 37 CFR 1.321 provides for the disclaimer of a claim by a 37 CFR 1.501 and 1.502 provide for ex parte reexamination of patents. Under these rules, a person ma......
  • Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions
    • United States
    • Federal Register August 14, 2012
    • August 14, 2012
    ...where a claim in a patent is overly broad. 37 CFR 1.291 provides for the protest against the issuance of a patent during examination. 37 CFR 1.321 provides for the disclaimer of a claim by a 37 CFR 1.501 and 1.502 provide for ex parte reexamination of patents. Under these rules, a person ma......
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191 cases
  • Barton v. Adang, Interference 103
    • United States
    • United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board
    • January 29, 2004
    ...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 cancelled by a reexamination certificate, is reissued, or is in any manner terminated prior to the expiration of its full statutory t......
  • In re Van Ornum, Appeal No. 82-505.
    • United States
    • United States Court of Customs and Patent Appeals
    • August 5, 1982
    ...in proper form and a second one was filed. The PTO rule or regulation on terminal disclaimers, which gives rise to the issue before us, is 37 CFR 1.321 which § 1.321 Statutory disclaimer. (a) A disclaimer under 35 U.S.C. 253 must identify the patent and the claim or claims which are disclai......
  • Immunex Corp. v. Sandoz Inc., Civil Action No.: 16-1118 (CCC)
    • United States
    • United States District Courts. 3th Circuit. United States District Courts. 3th Circuit. District of New Jersey
    • August 9, 2019
    ...9/12 (Blobel) AM Tr. at 24:9-18.39 The Finck Patents expire on the same day because each is subject to a terminal disclaimer pursuant to 37 CFR § 1.321.40 Plaintiffs alternatively argue that even under the one-way test, Defendants have failed to prove by clear and convincing evidence that a......
  • Pfizer Inc. v. Apotex Inc., Case Nos. 08-cv-7231
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • June 30, 2010
    ...that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting." 37 C.F.R. § 1.321(c)(3); see also In re Van Ornum, 686 F.2d 937, 944-48 (CCPA 1982) (finding common ownership requirement set forth in 37 § C.F.R. 1.321 to ......
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35 firm's commentaries
  • Lack of Co-ownership for Terminally Disclaimed Patents May Doom a Lawsuit and Result in an Award of Attorneys’ Fees
    • United States
    • JD Supra United States
    • October 14, 2019
    ...v. Union Sanitary Dist., 946 F.2d 870, 873 (Fed. Cir. 1991). 6 Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 940 (Fed. Cir. 1992). 7 37 C.F.R. § 1.321(c)(3). 8 In re Hubbell, 709 F.3d at 1145. 9 Keene Corp. v. United States, 508 U.S. 200, 207, 124 L. Ed. 2d I 18, 113 S. Ct. 13 2035 (1993) citi......
  • ODP Should Not Nullify PTA
    • United States
    • JD Supra United States
    • May 16, 2021
    ...or else the terminally disclaimed patent loses its enforceability during any period of time in which common ownership did not exist. 37 C.F.R. § 1.321(c)(3). See In re Van Ornum, 686 F.2d 937, 948 (CCPA 1982) (upholding the regulation); see e.g., In re Fallaux, 564 F.3d 1313, 1319 (Fed. Cir......
  • Japanese Foundation for Cancer Research v. Lee (Fed. Cir. 2014) - When you file a disclaimer, you'd better mean it
    • United States
    • JD Supra United States
    • December 12, 2014
    ...fee. From the Patent Office perspective, the attorney-of-record filed a statutory disclaimer on October 11, 2011, pursuant to 37 C.F.R. § 1.321(a). Two months later, on December 13, 2011 the attorney-of-record filed a petition to withdraw the statutory disclaimer under 37 C.F.R. § 1.182 (a ......
  • PTAB Life Sciences Report - July 2018
    • United States
    • JD Supra United States
    • July 3, 2018
    ...of the ′553 patent. Patent Owner filed a Preliminary Response along with a statutory disclaimer pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) that disclaims claims 1–31 and 36–61. Consequently, only claims 32–35 and 62–66 remained for consideration. Taking into account the argumen......
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8 books & journal articles
  • Navigating through the Obviousness-Type Double Patenting Minefield
    • United States
    • Landslide Nbr. 10-3, January 2018
    • January 1, 2018
    ...re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013). 2. Id. 3. See In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985). 4. 35 U.S.C. § 253(b); 37 C.F.R. § 1.321. 5. 37 C.F.R. § 1.321(b)–(d). 6. See, e.g., Bayer AG v. Carlsbad Tech., Inc., 298 F.3d 1377 (Fed. Cir. 2002) (allowing amendment of a ter......
  • The Colorblind Patent System and Black Inventors
    • United States
    • Landslide Nbr. 11-4, March 2019
    • March 1, 2019
    ...irrespective of which law applies. The law will, however, impact whether or not you can readily file a terminal disclaimer under 37 C.F.R. § 1.321(d) based on the existence of a joint research Who is involved? It should come as no surprise to many readers that in many cases the application ......
  • To Create and Own a Nontraditional Trademark, Just Follow Tradition
    • United States
    • Landslide Nbr. 10-3, January 2018
    • January 1, 2018
    ...re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013). 2. Id. 3. See In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985). 4. 35 U.S.C. § 253(b); 37 C.F.R. § 1.321. 5. 37 C.F.R. § 1.321(b)–(d). 6. See, e.g., Bayer AG v. Carlsbad Tech., Inc., 298 F.3d 1377 (Fed. Cir. 2002) (allowing amendment of a ter......
  • Paths or Fences: Patents, Copyrights, and the Constitution
    • United States
    • Iowa Law Review Nbr. 104-3, March 2019
    • March 1, 2019
    ...(9th Cir. 1990) (finding that an oral agreement created a non-exclusive license to a copyrighted work). 478. See 35 U.S.C. § 253(b); 37 C.F.R. § 1.321(a) (2018). 479. Statement of Purpose, CREATIVE COMMONS, https://creativecommons.org/publicdomain/ zero/1.0/legalcode (last visited Jan. 11, ......
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