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

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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.

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