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

Doc Code

PTO/AIA/25 (04-13)
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 PROVISIONAL DOUBLE PATENTING
REJECTION OVER A PENDING “REFERENCE” APPLICATION

Docket Number (Optional)

In re Application of:
Application No.:
Filed:
For:
The applicant,
, 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 applicant 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 applicant 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.

The undersigned is the applicant. If the applicant is an assignee, the undersigned is authorized to act on behalf of the assignee.

I hereby acknowledge that any willful false statements made are punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than
five (5) years, or both.

2.

The undersigned is an attorney or agent of record.

Reg. No. __________________

________________________________________________________________________ _______________________
Signature
Date
________________________________________________________________________________________________
Typed or printed name

Title

_________________________________
Telephone Number

Terminal disclaimer fee under 37 CFR 1.20(d) is included.

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information collection. Send comments regarding this burden estimate or any other aspect of this information collection, including suggestions for reducing this
burden to the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450 or email
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Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
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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
Routine uses of the information in this record may include disclosure to: 1) law enforcement, in the
event that the system of records indicates a violation or potential violation of law; 2) a Federal, state,
local, or international agency, in response to its request; 3) a contractor of the USPTO having need
for the information in order to perform a contract; 4) the Department of Justice for determination of
whether the Freedom of Information Act (FOIA) requires disclosure of the record; 5) a Member of
Congress submitting a request involving an individual to whom the record pertains, when the
individual has requested the Member’s assistance with respect to the subject matter of the record; 6)
a court, magistrate, or administrative tribunal, in the course of presenting evidence, including
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General Services Administration (GSA), or their designee, during an inspection of records conducted
by GSA under authority of 44 U.S.C. 2904 and 2906, in accordance with the GSA regulations and any
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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and/or examine your submission, which may result in termination of proceedings, abandonment of the
application, and/or expiration of the patent.

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.