As noted above, a statutory disclaimer is a declaration in which a patent holder waives one or more full claims. However, the disclaimer of a patent holder does not necessarily waive the rights of the public or a third party. See z.B. Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1384, 122 USPQ2d 1301, 1310 (Fed. Cir. 2017) (discussions of cases where the courts “have not easily extended the effects of the disclaimer to situations where others, with the exception of the patent holder, have an interest in abandoned claims”); Eli Lilly – Co. v. Barr Labs., Inc., 251 F.3d 955, 967 n.5, 58 USPQ2d 1869, 1878 n.5 (Fed. Cir. 2001) (“[a] patent holder cannot avoid a dual patent by not withdrawing the old patent”).
The claimed invention is the result of activities carried out within the framework of the joint research agreement; and under the Uruguay Round Agreements Act (URAA) (as of June 8, 1995), U.S. patents have a validity period of 20 years, measured from the earliest filing date or priority date. However, the 20-year term may be shortened when a final disclaimer is filed to defeat a patent-like double patent (ODP) issued by the U.S. Patent and Trademark Office (USPTO) in the case of litigation or litigation when patent claims are subsequently challenged under the ODP. According to 37 CFR 1.321 (a) and before AIA 37 CFR 1.321 (a), a legal disclaimer or a definitive disclaimer must: (1) the patent holder (the agent, the inventor, if the patent is not surrendered, or the assignee and inventors who have property rights when the patent was partially surrendered), or (2) a lawyer or agent of the records. A registered practitioner acting in representative capacity at 37 CFR 1.34 is not authorized to sign the disclaimer. If the lawyer or registration officer signs the non-responsibility, it is not necessary to comply with 37 CFR 3.73. An examiner may be aware of two or more applications filed by the same inventive person, various inventive companies that have a common inventor, have a common applicant and/or co-owner, or claim an invention arising from activities conducted under a joint research agreement within the meaning of 35 STATES.
C 102 c) or before AIA 35 U.S.S.C 103 (c) (2) and (3), which would raise a double patent question if one of the patent applications became patentable.