New and updated disclaimer forms
America's Innovation Agency, the United States Patent and Trademark Office (USPTO), has created new disclaimer forms and updated several existing disclaimer forms to address feedback from applicants and patent practitioners, reduce filing errors, lower filing burdens, and improve data collection. The changes benefit applicants, patentees, and patent practitioners by providing clearer guidance, supporting compliant filings, and reducing costs, while enabling more accurate reporting of disclaimers filed. The new and updated forms are available on our website here.
New forms
The USPTO has created four new forms for terminal disclaimers under 37 CFR 1.321(d) based on a joint research agreement (JRA), which are used to obviate nonstatutory double patenting: PTO/AIA/25JRA, PTO/AIA/26JRA, PTO/SB/25aJRA, and PTO/SB/26aJRA. These new forms address filing uncertainties expressed by applicants and reduce improper filings. Terminal disclaimers based on a JRA are filed less frequently than those based on common ownership, and applicants previously had to create their own forms.
Updated forms
The USPTO has updated four forms for terminal disclaimers under 37 CFR 1.321(c) based on common ownership, which are used to obviate nonstatutory double patenting. Prior to this update, the USPTO forms provided only a single field to list the reference. When filing over multiple references, applicants were required to either submit multiple terminal disclaimers, incurring multiple fees under 37 CFR 1.20(d), or create custom forms. The updated forms—PTO/AIA/25, PTO/AIA/26, PTO/SB/25a, and PTO/SB/26a—provide additional rows to enter up to 10 references and expanded space for the applicant field.
Form PTO/AIA/63, a terminal disclaimer that accompanies a petition to revive an abandoned design application, has also been updated to provide additional space for the applicant field.
Previous form PTO/SB/43 has been replaced with two separate forms: PTO/SB/43a for statutory disclaimers and PTO/SB/43b for terminal disclaimers filed under 37 CFR 1.321(a). Separate PTO/SB/43 forms provide clearer filing options and enable separate tracking of these disclaimers.
Additional information
If you have questions regarding the new and updated disclaimer forms, please email PatentPractice@uspto.gov or contact the Patent Electronic Business Center for assistance.
More information about disclaimers can be found in Chapter 1400 of the Manual of Patent Examining Procedure, beginning at section 1490.
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