Appeal No. 2003-0914 9
Application No. 09/192,713
only enforceable for and during the period that the two are commonly owned.
Accordingly, not requiring a terminal disclaimer on the theory that no subsequently issued
patent based on the first patent’s filing date may be extended beyond twenty years for
applications filed on or after June 8, 1995, would nullify the very purpose for which the
rule was promulgated.
Finally, as to the issue of multiple harassment, there is a lengthy discussion by the
court of a challenge to the requirement for maintaining the common assignment of
ownership of two or more patents issuing from a parent and a divisional application
wherein the filing of a terminal disclaimer has been required by this Office. See In re Van
Ornum, 686 F.2d 937, 948, 214 USPQ 761, 770, (CCPA 1982). The court held
that, “we consider it desirable to tie both the termination and the ownership of the two
patents together, as required by § 1.321(b), and, seeing no substantial obstacle to doing
so, hold it to be a valid regulation.” Accordingly, we sustain the decision of the examiner.
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