Rescinding Disclaimer Occurring During Prosecution of Parent Application(s)

© 2007 Christopher Paul Mitchell (Chris)

The CAFC’s decision in Hakim v. Cannon Avent Group, PLC, et al., No. 05-1398 (Fed. Cir. 2007) surprised some practitioners. Hakim had sued asserting infringement of its patents, including U.S. Patent No. 6,321,931 (the ‘931 patent). The lower court granted the defendants’ summary judgment motions, including a motion that the ‘931 patent was not infringed. The lower court reasoned that an amendment in a parent application to the ‘931 patent also was relevant in construing the claims of the ‘931 patent and thus narrowly construed the limitation in question.

On appeal, Hakim argued that “that by re-filing the application with broader claims, he avoided any unnecessary restriction that may have crept into the prior prosecution.” Slip op. at 5. The CAFC did not agree. The decision noted that

[a]lthough a disclaimer made during prosecution [of a parent application] can be rescinded, permitting recapture of the disclaimed scope, the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited.

Slip op. at 7.

In light of this decision, I will consider taking the practical approach of including the following form paragraph in the application papers when filing continuation applications:

This application is a continuation of prior pending U.S. Patent Application Ser. No. XXXXXXX, filed XXXXXXX, which is herein incorporated by reference in its entirety. Any disclaimer that may have occurred during the prosecution of the above-referenced application(s) is hereby expressly rescinded, and reconsideration of all relevant art is respectfully requested.

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