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PTAB Tracker

September 29, 2021

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.

Takeaways

  1. 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.
  2. Patent owners seeking to avoid Inter partes review have the option of disclaiming all of the claims challenged by a petition.

Author

Kenneth Hoover | Associate | Austin

Kenneth J. Hoover is an associate in the Austin office of Fish & Richardson P.C.. His practice emphasizes U.S. and foreign patent prosecution and post-grant proceedings in the fields of software, business methods, speech recognition, networking, semiconductor technologies, wireless communications, medical devices, and heat transfer technologies.... Read More