Disclaimer Of Claim (Sec. 253(a))

  • BASICS: “A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.” 35 U.S.C. 253(a).
  • Disclaimed Claim Treated As If Never In Patent, Unless That Would Harm A Public Interest Related To Disclaimed Claim: “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn (Fed. Cir. 09/26/96); Raytheon (Fed. Cir. 04/16/21) (“Disclaimed claims are treated as if they never existed.”); Vectra Fitness (Fed. Cir. 12/14/98) (aff’g invalidity of reissue claims for being broader than (non-disclaimed) claims of original patent: “a reissue application filed more than two years after the grant of the original patent is bounded by the claims … remaining in the patent after a disclaimer is filed.”). But courts “have not readily extended the effects of disclaimer to situations where others besides the patentee have an interest that relates to the relinquished claims.” Rembrandt (Fed. Cir. 04/17/17) (declining to excuse patent owner’s failure to mark products practicing a particular claim where patentee disclaimed that claim shortly before trial).
  • Sec. 253(a) Disclaimer Of Claim Is Not Admission That Claim Was In The Prior Art: Raytheon (Fed. Cir. 04/16/21) (“Disclaimer does not legally constitute “an admission that the subject of the disclaimer appears in the prior art.’”).

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