AIPLA Submits Comments on Notice of Proposed Rulemaking Regarding Disclaimer Practice in Patents and Patent Applications
All documents are in PDF format.
On March 22, 2021, AIPLA submitted comments to the USPTO on the notice of proposed rulemaking regarding disclaimer practice in patents and patent applications. AIPLA supports the Office’s proposed revisions to the rules and includes a suggestion to clarify the rules regarding disclaimers by parties to a joint research agreement.
AIPLA agrees with the Office’s proposed revision to 37 C.F.R. § 1.321(d) to permit a terminal disclaimer to be filed by a party to a joint research agreement. AIPLA views the proposed revision to 37 C.F.R. § 1.321(d) as consistent with the purpose of the CREATE Act. AIPLA suggests that the Office clarify the proposed revision to expressly require that each party to a joint research agreement has consented to the disclaimer.
AIPLA agrees with the Office’s proposed revision to 37 C.F.R. § 1.321 to explicitly provide that a terminal disclaimer may be filed to obviate a potential nonstatutory double patenting rejection or concern. AIPLA also agrees with the Office’s proposed revision to 37 C.F.R. § 1.130 to explicitly permit an affidavit or declaration of attribution to overcome the potential rejection or concern. These changes are consistent with the Office’s practice of supporting compact prosecution.
To read the full comments, please download the file.
2024 AIPLA Virtual Corporate Practice Institute
January 9 to 16, 2024 | Up to 360 Minutes of CLETuesday, January 9, 12:00 Noon - 5:00 PM - and Tuesday, January 16, 12:00 Noon - 5:00 PM -- The Corporate Practice Institute is a virtual event will take place on the 2nd and 3rd Tuesday of January, and will consist of 60 minute Sessions with 30 minute breaks in between. Each evening will end with an online networking event. Program Coming soon! Special registration rates for in-house corporate practitioners.
2024 Patent Prosecution Boot Camp - San Jose, CA
February 7 to 9, 2024Register today and don't miss out! The Patent Prosecution Boot Camp is a comprehensive, CLE-accredited seminar that includes instructional lecture-style sessions with practical tips on U.S. and international patent preparation and prosecution, as well as hands-on interactive workshops that will walk you through drafting claims and responding to office actions.
2024 Trade Secret Summit
March 14 to 15, 2024Save the Date! Please join the AIPLA Trade Secret Committee for the 2024 Trade Secret Summit, which is being held March 14-15, 2024 in Santa Clara, California. The AIPLA Trade Secret Summit is the leading trade secret conference in the nation, with speakers from across the spectrum of private practitioners, in-house counsel, government, and academia, as well as fantastic networking opportunities. Registration and Venue Information Coming Soon!