PTO/SB/26 Terminal Disclaimer to Obviate a Double Patenting Reject

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PTO/SB/26 (08-11)
Approved for use through XX/XX/XXXX. OMB 0651-0031
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
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TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTING
REJECTION OVER A “PRIOR” PATENT

Docket Number (Optional)

In re Application of:
Application No.:
Filed:
For:
The owner*, _________________________________________, of ____________ percent interest in the instant application hereby disclaims,
except as provi ded below, the te rminal part of the statutory term of any patent granted on the instant application which would extend beyond
the expiration date of the full statutory term of prior patent No. __________________ as the term of said prior patent is presently shortened
by any terminal disclaimer. The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and
during such period that it and the prior patent are commonly owned. This agreement runs with any patent granted on the instant application
and is binding upon the grantee, its successors or assigns.
In making the above discl aimer, the owner does not disclaim the terminal part of the term of any patent granted on the instant application that
would extend to the expiration date of the full statutory term of the prior patent, “as the term of said prior patent is presently shortened by any
terminal disclaimer," in the event that said prior patent later:
expires for failure to pay a maintenance fee;
is held 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 statutory term as presently shortened by any terminal disclaimer.
Check either box 1 or 2 below, if appropriate.
1.

For submissions on behalf of a business/organization (e.g., corporation, partnership, university, government agency,
etc.), the undersigned is empowered to act on behalf of the business/organization.

I h ereby declare that all statements made herein of my own knowledge are true and that all statements made on information and
belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so
made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false
statements may jeopardize the validity of the application or any patent issued thereon.
2.

The undersigned is an attorney or agent of record. Reg. No.___________________

_______________________________________________________________________ _____________________
Signature
Date
______________________________________________________________________________________________
Typed or printed name
_______________________________
Telephone Number
Terminal disclaimer fee under 37 CFR 1.20(d) included.
WARNING: Information on this form may become public. Credit card information should not
be included on this form. Provide credit card information and authorization on PTO-2038.
*Statement under 37 CFR 3.73(b) is required if terminal disclaimer is signed by the assignee (owner).
Form PTO/SB/96 may be used for making this certification. See MPEP § 324.
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Privacy Act Statement
The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
with your submission of the attached form related to a patent application or patent. The United States
Patent and Trademark Office (USPTO) collects the information in this record under authority of 35
U.S.C. 2. The USPTO’s system of records is used to manage all applicant and owner information
including name, citizenship, residence, post office address, and other information with respect to
inventors and their legal representatives pertaining to the applicant's/owner’s activities in connection
with the invention for which a patent is sought or has been granted. The applicable Privacy Act
System of Records Notice for the information collected in this form is COMMERCE/PAT-TM-7 Patent
Application Files, available in the Federal Register at 78 FR 19243 (March 29, 2013). https://
www.govinfo.gov/content/pkg/FR-2013-03-29/pdf/2013-07341.pdf
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other relevant (i.e., GSA or Commerce) directive, where such disclosure shall not be used to make
determinations about individuals; 8) another federal agency for purposes of National Security review
(35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C. 218(c)); 9) the Office of
Personnel Management (OPM) for personnel research purposes; and 9) the Office of Management
and Budget (OMB) for legislative coordination and clearance.
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Additional Uses
Additional USPTO uses of the information in this record may include disclosure to: 1) the International
Bureau of the World Intellectual Property Organization, if the record is related to an international
application filed under the Patent Cooperation Treaty; 2) the public i) after publication of the
application pursuant to 35 U.S.C. 122(b), ii) after issuance of a patent pursuant to 35 U.S.C. 151, iii) if
the record was filed in an application which became abandoned or in which the proceedings were
terminated and which application is referenced by either a published application, an application open
to public inspections, or an issued patent, or iv) without publication of the application or patent under
the specific circumstances provided for by 37 CFR 1.14(a)(1)(v)-(vii); and/or 3) the National Archives
and Records Administration, for inspection of records.