PTO/SB/25 Terminal Disclaimer to Obviate a Provisional Double Pate

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PTO/SB/25 (08-11)
Approved for use through 07/31/2012. OMB 0651-0031
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
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TERMINAL DISCLAIMER TO OBVIATE A PROVISIONAL DOUBLE PATENTING
REJECTION OVER A PENDING “REFERENCE” APPLICATION

Docket Number (Optional)

In re Application of:
Application No.:
Filed:
For:
The owner*,
, of
percent interest in the instant application hereby disclaims,
except as provided below, the terminal 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 any patent granted on pending reference Application Number
, filed
, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed
prior to the grant of any patent on the pending reference application. 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 any patent granted on the reference application 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 disclaimer, the owner does not disclaim the terminal part of any patent granted on the instant application that would extend
to the expiration date of the full statutory term of any patent granted on said reference application, “as the term of any patent granted on said
reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application,”
in the event that: any such patent: granted on the pending reference application: 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 shortened by any terminal disclaimer filed prior to its grant.

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 hereby 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) is 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 statement. See MPEP § 324.
This collection of information is required by 37 CFR 1.321. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete,
including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.

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. Accordingly,
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark
Office is to process and/or examine your submission related to a patent application or patent. If you do
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to
process and/or examine your submission, which may result in termination of proceedings or
abandonment of the application or expiration of the patent.
The information provided by you in this form will be subject to the following routine uses:
1. The information on this form will be treated confidentially to the extent allowed under the
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
this system of records may be disclosed to the Department of Justice to determine whether
disclosure of these records is required by the Freedom of Information Act.
2. A record from this system of records may be disclosed, as a routine use, in the course of
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to
opposing counsel in the course of settlement negotiations.
3. A record in this system of records may be disclosed, as a routine use, to a Member of
Congress submitting a request involving an individual, to whom the record pertains, when the
individual has requested assistance from the Member with respect to the subject matter of the
record.
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the
Agency having need for the information in order to perform a contract. Recipients of
information shall be required to comply with the requirements of the Privacy Act of 1974, as
amended, pursuant to 5 U.S.C. 552a(m).
5. A record related to an International Application filed under the Patent Cooperation Treaty in
this system of records may be disclosed, as a routine use, to the International Bureau of the
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
6. A record in this system of records may be disclosed, as a routine use, to 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)).
7. A record from this system of records may be disclosed, as a routine use, to the Administrator,
General Services, or his/her designee, during an inspection of records conducted by GSA as
part of that agency’s responsibility to recommend improvements in records management
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall
be made in accordance with the GSA regulations governing inspection of records for this
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not
be used to make determinations about individuals.
8. A record from this system of records may be disclosed, as a routine use, to the public after
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37
CFR 1.14, as a routine use, to the public 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 inspection or an
issued patent.
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State,
or local law enforcement agency, if the USPTO becomes aware of a violation or potential
violation of law or regulation.