General Electric Co. v. United Techs. Corp., Case IPR2017-00491, Paper 9
In this case, patent owner filed a statutory disclaimer under 35 U.S.C. 253(a) disclaiming all of the claims challenged in the petition prior to an institution decision. The PTAB explained that a “disclaimer under 35 U.S.C. § 253(a) is ‘considered as part of the original patent’ as of the date on which it is ‘recorded’ in the Office.” 35 U.S.C. § 253(a). No further action is required on the part of the Patent Office. Inter partes review was denied because all the challenged claims had been timely disclaimed.
- By designating this opinion as precedential, the PTAB has made clear that institution would not be proper when all challenged claims are disclaimed prior to an institution decision.
- Patent owners seeking to avoid Inter partes review have the option of disclaiming all of the claims challenged by a petition.