Chapter §21.04 Disclaimer Under 35 U.S.C. §253
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§21.04 Disclaimer Under 35 U.S.C. §253
[A] Disclaimer of Invalid Claims
Another method of correcting an issued patent is by filing a disclaimer of a particular claim or claims of the patent. After obtaining a patent, the patent owner may determine that certain of its claims are invalid. Claims stand or fall independently as far as their validity is concerned. If certain claims of the patent are invalid, the remaining claims are not thereby rendered invalid.170 The patentee may disclaim the invalid claims by filing a written disclaimer and paying the appropriate fee to the USPTO.171
Post-America Invents Act, the Patent Act no longer requires a lack of deceptive intent in order to disclaim the invalid claims. The statute provides in pertinent part:
§253. Disclaimer
(a) In general.—Whenever a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. 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. 172
The Patent Act provides an incentive to disclaim invalid claims. A patentee can bring an action for infringement in which the patentee asserts only the valid claims of a patent, even though it believes other claims in the patent to be invalid. However, the patentee will forfeit any potential recovery of costs from the infringement lawsuit unless the patentee filed a disclaimer of the invalid claims before commencing the lawsuit. The Patent Act provides:
§288. Action for infringement of a patent containing an invalid claim
Whenever a claim of a patent is invalid, an action may be maintained for the infringement of a claim of the patent which may be valid. The patentee shall recover no costs unless a disclaimer of the invalid claim has been entered at the Patent and Trademark Office before the commencement of the suit. 173
[B] Terminal Disclaimers
[1] Generally
Terminal disclaimers are typically filed by a patent applicant in order to overcome an obviousness-type double patenting rejection during prosecution of a patent application (or reexamination of an issued patent).174 Terminal disclaimers may also be available as a means of overcoming the invalidation during litigation of a patent on obviousness-type double patenting grounds.175 Such disclaimers surrender a defined period of the patent's enforceable life at the end or "terminal" part of its term. Terminal disclaimers are authorized by the second paragraph of 35 U.S.C. §253 as follows:
§253. Disclaimer
. . .
(b) Additional disclaimer or dedication.—In the manner set forth in subsection (a), any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.
Patent Office rules regulate the content of terminal disclaimers.176 Terminal disclaimers are discussed in further detail elsewhere in this treatise.177
[2] Unauthorized Filing of Terminal Disclaimers
Beyond the typical scenario of overcoming an obviousness-type double patenting rejection, a patentee may choose to file a disclaimer of all the claims of its patent as a means of immediately cancelling the patent and dedicating it to the public. If filed in accordance with USPTO regulations, the Federal Circuit will likely construe such a disclaimer strictly; that is, the disclaimer will be treated as valid and final, even when the patent owner did not actually authorize the disclaimer. The Circuit's 2014 decision in Japanese Foundation for Cancer Research v. Lee,178 in which a patent was erroneously disclaimed by its owner's attorney of record, illustrates the perils of miscommunication between attorney and patent owner/client.
Based in Tokyo, the non-profit Japanese Foundation for Cancer Research ("Foundation") was the first institute in Japan specializing in cancer research. Its work was partially funded through royalties collected from licensing its patents.179 Those patents included U.S. Patent No. 6,194,187 ('187 patent), which the Foundation licensed to two pharmaceutical companies.180 Based on a series of delayed communications and misunderstandings between a paralegal employed by Japanese patent counsel for one of the licensees and the Foundation's U.S. patent prosecution counsel of record,181 U.S. patent counsel erroneously understood that it had been instructed to disclaim the remaining term of the '187 patent. Accordingly, U.S. patent counsel filed with the USPTO a statutory terminal disclaimer of the '187 patent on October 11, 2011. The filing disclaimed "the entire term of all claims in U.S. Patent 6,194,187," requested that the disclaimer be "duly recorded", and complied with the pertinent USPTO regulation (37 C.F.R. §1.321[a]), including the payment of the required fee.182 When the Foundation learned about the terminal disclaimer in late November 2011, it immediately instructed the U.S. patent counsel (in a fax marked "EXTREMELY URGENT"183) to withdraw the disclaimer. Following a series of petitions, the USPTO issued a final decision in February 2013 refusing to withdraw the disclaimer.
The Foundation then sued the USPTO Director in federal district court for violating the Administrative Procedure Act.184 The lawsuit alleged that the agency's refusal to withdraw the terminal disclaimer under the circumstances of the case was "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law."185 The Eastern District of Virginia judge agreed, granting the Foundation's motion for summary judgment and directing the USPTO to withdraw the terminal disclaimer.186 The district court's judgment was based on its conclusions that the USPTO had
(1) erred as a matter of law when it ruled that the Foundation was bound by an unauthorized filing of the terminal disclaimer and refused for that reason to withdraw the unauthorized disclaimer; (2) erred as a matter of law when it ruled that it was without inherent authority to withdraw the disclaimer under the circumstance of this case; and (3) abused its discretion when it ruled that it would not exercise any inherent authority it did have to withdraw the disclaimer. 187
On appeal, the Federal Circuit in Japanese Foundation reversed the district court and vacated its order for withdrawal of the terminal disclaimer. In short, the Circuit concluded that the USPTO did not have either statutory or inherent authority to withdraw the terminal disclaimer, which complied with USPTO regulations and had been filed by the patent owner's attorney of record (as those regulations permitted). The patent could not be restored; if the Foundation was to have any remedy, it would lie in a malpractice action.
First, the Federal Circuit rejected the Foundation's argument that the USPTO had statutory authority to withdraw the terminal disclaimer under the certificate of correction procedure provided for by Section 255 of the Patent Act. That section, titled "Certificate of correction of applicant's mistake," provides that the USPTO Director may issue a certificate of correction upon payment of the appropriate fee "[w]henever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith . . . if the correction does not involve such changes in the patent as would constitute new matter or would require re-examination."188 However, USPTO policy as reflected in the agency's Manual of Patent Examining Procedure generally prohibits the use of a certificate of correction to correct a mistake in filing a terminal disclaimer.189 Moreover, the Federal Circuit explained, the "clerical or typographical" mistakes referred to in 35 U.S.C. §255 are understood as limited to "simple mistakes" that are immediately apparent from the face of the document being corrected. In the case at bar, the Foundation was contending that the act of filing the terminal disclaimer...
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