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DOC/PTO RIN: 0651-AD46 Publication ID: Spring 2022 
Title: Disclaimer Practice in Patents and Patent Applications 

The United States Patent and Trademark Office (USPTO or Office) amends the rules of practice to expand when certain types of patent applicants and patentees may, subject to other conditions, obtain or enforce a second patent for an invention that is similar (i.e., patentably indistinct) to a first patent. Ordinarily, in examination before the USPTO, any application for a second patent covering such similar invention would be rejected. The rule change is limited to the situation where owners of the first and second patents or patent applications are different but have an agreement to conduct research together (i.e., a joint research agreement). For this limited situation, the rule change would increase the ability to file a document, called a terminal disclaimer, that ties the rights of a second patent to the first patent. Specifically, a terminal disclaimer causes the second patent to limit its enforceable patent term to end no later than the first patent’s term and limits when the second patent can be enforced. The rule change would expand when a terminal disclaimer is permitted to be filed in the joint research agreement situation by eliminating the requirement that the second patent or patent application be filed later than the first patent or patent application. The USPTO also amends its rules of practice to explicitly state existing practices in the rules regarding when certain affidavits and declarations, as well as terminal disclaimers, may be filed.

Agency: Department of Commerce(DOC)  Priority: Substantive, Nonsignificant 
RIN Status: Previously published in the Unified Agenda Agenda Stage of Rulemaking: Final Rule Stage 
Major: No  Unfunded Mandates: No 
CFR Citation: 35 CFR 1   
Legal Authority: 35 U.S.C. 2(b)(2)   
Legal Deadline:  None
Action Date FR Cite
NPRM  12/30/2020  85 FR 86518   
NPRM Comment Period End  03/22/2021 
Final Action  08/00/2022 
Final Action Effective  09/00/2022 
Regulatory Flexibility Analysis Required: No  Government Levels Affected: None 
Small Entities Affected: No  Federalism: No 
Included in the Regulatory Plan: No 
RIN Data Printed in the FR: No 
Agency Contact:
Raul Tamayo
Senior Legal Advisor
Department of Commerce
Patent and Trademark Office
P. O. Box 1450,
Alexandria, VA 22313-1450
Phone:571 272-7728
Fax:571 273-7728