AIPLA Submits Comments on Notice of Proposed Rulemaking Regarding Disclaimer Practice in Patents and Patent Applications March 22, 2021

File Downloads

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.

Upcoming Events

  • AIPLA 2025 Annual Meeting

    October 30 to November 1, 2025

    Join us as we bring IP professionals together to learn and connect. More information coming soon! The 2025 Annual meeting will take place at the Westin Washington, DC, Downtown. Leadership Meetings on Wednesday, October 29. Programming scheduled October 30 - November 1.
  • 2026 Spring Meeting - San Francisco, CA

    May 13 to 15, 2026

    We’re excited to welcome you to the 2026 AIPLA Spring Meeting, where innovation, technology, and intellectual property come together to shape the future. San Francisco is ready for your ideas, energy, and passion for IP!
  • AIPLA 2026 Annual Meeting

    October 29 to 31, 2026

    Join us as we bring IP professionals together to learn and connect. More information coming soon! The 2026 Annual meeting will take place at the Westin Washington, DC, Downtown. Leadership Meetings on Wednesday, October 28. Programming scheduled October 29 - 31.