37 CFR 1.321 (pre-AIA) — Statutory disclaimers, including terminal disclaimers
Ninth Edition, Revision 01.2024
[Editor Note: Para. (b) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012 *]
- (b) An applicant or assignee may disclaim or dedicate
to the public the entire term, or any terminal part of the term, of
a patent to be granted. Such terminal disclaimer is binding upon
the grantee and its successors or assigns. The terminal disclaimer,
to be recorded in the Patent and Trademark Office, must:
- (1) Be signed:
- (i) By the applicant, or
- (ii) If there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
- (iii) If there is an assignee of record of the entire interest, by such assignee, or
- (iv) By an attorney or agent of record;
- (2) Specify the portion of the term of the patent being disclaimed;
- (3) State the present extent of applicant’s or assignee’s ownership interest in the patent to be granted; and
- (4) Be accompanied by the fee set forth in § 1.20(d) .
- (1) Be signed:
[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (c) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para (d) added, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; paras. (c) and (d) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para.(d) introductory text revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
[ *See § 1.321 for more information and for para. (b) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
Cited authority
Cited by
- 1401 Reissue
- 1410 Content of Reissue Application
- 1411 Form of Specification
- 1411.01 Certificate of Correction or Disclaimer in Original Patent
- 1490 Disclaimers
- 1504.03 Nonobviousness
- 1504.06 Double Patenting
- 2146.02 Establishing Common Ownership or Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c)
- 2146.03 Examination Procedure With Respect to Pre-AIA 35 U.S.C. 103(c)
- 2146.03(a) Provisional Rejection (Obviousness) Under 35 U.S.C. 103(a) Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e)
- 2250.03 Fees for Adding Claims and for Filing a Petition
- 711.03(c) Petitions Relating to Abandonment
- 718 Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c)
- 804 Definition of Double Patenting
- 804.02 Avoiding a Double Patenting Rejection
- 804.03 Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement
- 821.04 Rejoinder
- 37 CFR 1.137 Revival of abandoned application, or terminated or limited reexamination prosecution
- 37 CFR 1.173 Reissue specification, drawings, and amendments
- 37 CFR 1.321 Statutory disclaimers, including terminal disclaimers
- 37 CFR 1.775 Calculation of patent term extension for a human drug, antibiotic drug, or human biological product
- 37 CFR 1.776 Calculation of patent term extension for a food additive or color additive
- 37 CFR 1.777 Calculation of patent term extension for a medical device
- 37 CFR 1.778 Calculation of patent term extension for an animal drug product
- 37 CFR 1.779 Calculation of patent term extension for a veterinary biological product