37 C.F.R. §1.321 - Statutory disclaimers, including terminal disclaimers
| Cite as | 37 C.F.R. §1.321 |
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251 cases
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In re Van Ornum, Appeal No. 82-505.
...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......
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Pfizer Inc. v. Apotex Inc., Case Nos. 08-cv-7231
...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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Immunex Corp. v. Sandoz Inc., Civil Action No.: 16-1118 (CCC)
...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......
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Barton v. Adang, Interference 103
...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......
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38 firm's commentaries
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Lack of Co-ownership for Terminally Disclaimed Patents May Doom a Lawsuit and Result in an Award of Attorneys’ Fees
...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......
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ODP Should Not Nullify PTA
...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......
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Japanese Foundation for Cancer Research v. Lee (Fed. Cir. 2014) - When you file a disclaimer, you'd better mean it
...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 ......
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PTAB Life Sciences Report - July 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
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Paths or Fences: Patents, Copyrights, and the Constitution
...(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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Responding to Nonstatutory Double Patenting Rejections: A Practitioner's Perspective
...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 agreement. Who is involved? It should come as no surprise to many readers that in many cases the a......
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The Impact of GDPR on Online Brand Enforcement: Lessons Learned and Best Practices for IP Practitioners
...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 agreement. Who is involved? It should come as no surprise to many readers that in many cases the a......
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Navigating through the Obviousness-Type Double Patenting Minefield
...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 te......
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4 forms
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Terminal Disclaimer to Obviate a Double Patenting Rejection Over a "Prior" Patent-AIA/26
...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 claims canceled by a reexamination is reissued; or is in any manner terminated prior to the expiration of its full statutory term as ......
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Terminal Disclaimer to Obviate a Provisional Double Patenting Rejection Over a Pending "Reference" Application-AIA/25
...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 claims canceled by a reexamination certificate, is reissued, or is in any manner terminated prior to the expiration of its full statu......
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Terminal Disclaimer in a Patent or Proceeding in view of an Application-SB/25a
...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 claims canceled by a reexamination certificate; is reissued; or is in any manner terminated prior to the expiration of its full statu......
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Terminal Disclaimer in a Patent or Proceeding in view of Another Patent-SB/26a
...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 claims canceled by a reexamination certificate; is reissued; or is in any manner terminated prior to the expiration of its full statu......