(L-R)Francis DiGiovanni and Claudia Schultze of Faegre Drinker Biddle & Reath. Courtesy photos
A terminal disclaimer—a seemingly simple document that shortens a patent’s life by declaring that it expires upon the expiration of another commonly owned patent—is replete with technical and substantive traps for the unwary and far-reaching consequences during both prosecution and enforcement of U.S. patents. This article addresses the basics of terminal disclaimers and explores their trap doors, vulnerabilities, and benefits.
Terminal Disclaimers
A terminal disclaimer is a statement filed during patent prosecution or during the life of a patent in which the patent applicant or patent owner disclaims or dedicates to the public the terminal portion of the term of a patent. Terminal disclaimers are authorized by the Patent Statute. See 35 U.S.C. Section 253(b).
