A terminal disclaimer that purports to attach to all child applications will be honored. Here, for example, a terminal disclaimer in a parent application stating that it attaches to “any application which is entitled to the filing date of this application under 35 U.S.C. § 120” was found to limit the term of a child application. It may therefore be best to ensure that—like the current PTO form—no such statements are included in your terminal disclaimer forms.
Background / Facts: The patent on appeal here from an adverse reexamination decision by the PTO is the third patent issued for the “Harvard mouse” inventions. The second patent was the subject of an obviousness-type double patenting rejection in view of the first patent. In response, the applicant filed a terminal disclaimer disclaiming any portion of the term “of any patent granted on the above-identified application or on any application which is entitled to the filing date of this application under 35 U.S.C. § 120.”
Issue(s): Whether the required terminal disclaimer fee was ever paid to give effect to the terminal disclaimer in the second patent and, by extension given the language of the terminal disclaimer, to the third patent claiming priority thereto.
Holding(s): Yes. Although acknowledging that it “might have reached a different result if we were weighing the evidence in the first instance,” the court nevertheless found that “the record contains a rational basis to support the PTO’s factual finding that [the patentee] paid the terminal disclaimer fee.” Accordingly, the second and third patents’ term was effectively disclaimed, and the third patent was expired at the time of the reexamination, such that no new claims could be entered.