Keep track of terminal disclaimers

Puck for Use on pavement

When filing a terminal disclaimer to overcome a double-patenting rejection, federal rules require a statement of common ownership of the two patents.  In the recent case of Bellehumeur v. Bonnet (Fed. Cir. March 8, 2005, NONPRECEDENTIAL), the patentee had filed such a statement for two patents relating to a puck for use on a non-ice surface.  (U.S. Patent No. 5,275,410).  However, during litigation, Bellehumeur could not produce any evidence that he was the exclusive owner of both patents.  As a result, the CAFC vacated the infringement judgment and remanded for a determination of ownership and enforceability.