NO DISCLAIMERS OR DISAVOWALS

What do you think of the following boiler-plate language that some applicants are including in their office-action responses:

NO DISCLAIMERS OR DISAVOWALS

Although the present communication may include alterations to the application or claims, or characterizations of claim scope or referenced art, the Applicants are not conceding in this application that previously pending claims are not patentable over the cited references. Rather, any alterations or characterizations are being made to facilitate expeditious prosecution of this application.

Applicant reserves the right to pursue at a later date any previously pending or other broader or narrower claims that capture any subject matter supported by the present disclosure, including subject matter found to be specifically disclaimed herein or by any prior prosecution.

Accordingly, reviewers of this or any parent, child or related prosecution history shall not reasonably infer that the Applicants have made any disclaimers or disavowals of any subject matter supported by the present application.

57 thoughts on “NO DISCLAIMERS OR DISAVOWALS

  1. I think the language is useful for litigation where you have the possibility of continuations on file and are seeking “broader” claims on other points of novelty.

  2. I have said “assuming for the sake of argument (without conceding the point) that the Examiner is correct regarding [x], the claims are still patentable because [y]. Furthermore, the Examiner’s interpretation is wrong because of [z].”

    I think anyone would have a tough time arguing prosecution history estoppel there.

  3. Well…if certain “general” language supplies some context for how you intend for your “specific” language to be interpreted, then it can indeed serve the purpose of aiding the description.

  4. Not much. This “boiler plate” usually does not contribute to the requirement that a patent application describe the invention. A good test might be to ask does the boiler plate really say anything specific about the invention rather than generalities that are applicable to inventions in general?” The time would be better spent disclosing real alternatives in the written description

  5. Hmmm,

    I guess MaxDrei caught again in a contradiction didn’t interest him enough to defend his behavior.

    And I didn’t even get to use my Yogi-ism of chickens before the cart of dead horses.

  6. Is patent law the only area of law that does not permit tentative argument (i.e., arguing in the alternative)?

    That general issue seems to also come up with CIPs – e.g., you first try to argue that the parent-patent’s disclosure contains enough support for a given later claim; but if unsuccessful, you’re forever prohibited from turning around and arguing that said later claim is non-obvious in light of said parent.

  7. LB: You are correct that Hakim was about claim construction. I guess I remembered that part incorrectly. You are also correct that my summary of the importance of the case is not the verbatim holding, and I might have interpreted the case to confer more significance to a disclaimer/rescinder then some courts would. Perhaps a prosecutor should specifically list the prior art that is the subject of the disclaimer and state that the Examiner may need to revisit it.

  8. Elvis, not only invalid, but fraudulently procured.  How can you get a lawyer to file such papers?  How can you get a lawyer to represent you in court? 
     
    If someone come after my client with such a patent, I would show them the door.

     
    Sent from Windows Mail
     

  9. Maybe something like this: “Although applicant has not defined the scope of any terms used in the claims, we reserve the right to provide a binding definition at the time of enforcement.”

    LOL!

  10. I’m not an attorney at law and not an American legal practitioner (so you guys educate me) but I have always wondered about the form of words “we reserve the right to….whatev.”

    You see, I’m not sure there is any “right” to do many of the things people assert so boldly that they are reserving. Many of them are things (are they not?) for which one is dependent on the favourable exercise of discretion. If so, where is the “right” of which they speak?

  11. Maybe something like this: "Although applicant has not defined the scope of any terms used in the claims, we reserve the right to provide a binding definition at the time of enforcement."

  12. we do need some way to state that a surprising or unreasonable interpretation of an applicant’s intention by a court should not apply to our application.

    Too bad we’re all so scared of stating in the response what the applicant’s actual intention is in making this particular amendment or argument. I bet that would work.

  13. There are a number of prominent Federal Circuit cases that accord no weight to boilerplate language. That said, if it winds up before a jury, such language might be a nice add, depending on the defendant’s argument.

  14. Going against the grain, I actually think this sort of disclaimer can be valuable — in litigation. These sorts of boilerplate statements (such as the portion at the end of the spec that indicates the invention isn’t intended to be limited to just the embodiments described, but is intended to include other embodiments that would be apparent to one of ordinary skill) can be used and in my experience sometimes are used in a Markman or at trial. Regardless of whether it technically has any legal effect, it still can have value, and there’s no downside to including it. YMMV

  15. Or were you trying to disperse, dilute, obfuscate, and render ambiguous the actual point of what Les was saying?

  16. It’s up to the courts to arrest the proliferation of boilerplate.

    You have the cart before the horse (or the chicken and the egg; or are the chickens riding the horse pulling a cart of eggs…)- the comments above (rightly) indicate that it is because of the courts that boilerplate emerges.

    If it is up to the courts to arrest what they themselves originate, are you saying that the courts can take care of the issue in the first instance by simply writing decisions that do not instigate boilerplate?

  17. Agree, AAA JJ. About on par with the value of provisionals that are simply a coversheet with the abstract of an article attached to it as the alleged “provisional specification.”

  18. I agree that boilerplate is problematic and can be ineffective, but we do need some way to state that a surprising or unreasonable interpretation of an applicant’s intention by a court should not apply to our application. I distinguish this from the desire to say that an amendment was not made to avoid the prior art when it was made to avoid the prior art. The first should be permissible, the second is problematic at best.

  19. Sereboff writes above: boilerplate will eventually become the norm, and failing to include it could be viewed as substandard work

    and for the USA he’s right, isn’t he?

    The point is not whether the b’plate does make a legal difference. Rather, in a 50:50 case (malpractice or not, invalidity or not, how far the claim can reach, issue or not) who can say that the b’plate will never tip the balance?

    So, if it costs nothing to include it, if there’s no downside, if it certainly does no harm, but including it does impress the client to the extent you can bill him more and, looking ahead, might conceivably once in a blue moon put off your client from suing you for malpractice and thereby save your skin, well then do it, no?

    But wait. If you overdo the b’plate, might that not prompt the client to lose confidence in you and take his business elsewhere? Only asking.

    Les above makes a good point, that once upon a time drafters used the word “invention” but don’t any more, and the word “step” but not any more. It’s up to the courts to arrest the proliferation of boilerplate. Whenever possible, they should punish those who use boilerplate to disperse, dilute, obfuscate and render ambiguous the useful information content of their docs.

  20. The Examiner called and said that if I agree with the changes I can get my patent faster. Ok, I give. But I reserve the right to come back later and take another shot at it especially if I get into a tussle over the license or an enforcement action.

    Annoying textual bulk added to the application.

  21. “The same goes for owners, who might intentionally abandon their applications or patents by non payment of fees. Why not simply allow them to change their minds — essentially pulling the rug out from under anyone who relies on the prior statements or abandoment.”

    Ned, that’s already the for applications: petitions to revive applications for unintentional abandonment can now be filed as ePetitions and automatically granted!

    link to uspto.gov

    As long as someone signs the magic statement that the abandonment was unintentional for its entire period, the application will be revived. Sure, the patent may be invalidated years later during litigation when it comes out that that statement wasn’t true, but if you assert the patent against small fry they’ll settle before getting to discovery.

    This creates a difficulty when advising clients about freedom to operate: a competitor’s app is abandoned, but it could be revived the day after you give your opinion.

  22. By the way, much better boilerplate has in fact been available for appropriate use for many many years.

    No one – and I mean no one – should ever unthinkingly simply use boilerplate.

  23. Rather, any alterations or characterizations are being made to facilitate expeditious prosecution of this application.

    I think a better case than “boilerplate must be bad” is that an attorney’s response must be based on his believing the truth of what he says.

    If in fact, the statement re-presented here is not true, the attorney has engaged in fraud on the office.

    Having said that, let’s look at the rest of the story (in pertinent part): “the Applicants are not conceding” -

    ah! you see, the applicant is not making a positive statement that the instant application (and amendment changes) avoid the proper surrender of DOE, they are merely adding another possibility.

    In the sense that this is simply a “well maybe” style of weasel words, the boilerplate loses much of its effectiveness.

    If in fact (and in each situation) the applicant can be more forceful that the amendments actually are for expediency, (as would be evidenced by the filing of a continuation with the non-amended claim – since that filing would involve an oath or declaration), and can use more direct language, the “boilerplate” – even if merely a generic (albeit more forceful and direct generic) paragraph rubber stamped in – would have its appropriate force.

  24. It would be nice as patent prosecutors never to be bound by anything we did or said, no matter what.

    The same goes for owners, who might intentionally abandon their applications or patents by non payment of fees. Why not simply allow them to change their minds — essentially pulling the rug out from under anyone who relies on the prior statements or abandoment.

    The more unfair to the public the better, right?

  25. I think you need to add a bit to that statement. Your Venn diagram circles overlap extensively.

    OK. In re Hakim was about claim scope disclaimer by argument, not about the forfeiture of the doctrine of equivalents by amendment.

    I also don’t think that a “very case-specific notice” is required. If a broad notice is applied in a particular case and is thus present in that case, it then applies. There does not appear to be a requirement for “magic words” of specificity.

    You could be right. But I remain concerned about the court’s statement that 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. I’m not sure that a general statement that says that I generally “reserve the right” to pursue matter that has been previously disclaimed meets this requirement. I don’t think I’d rely on it, anyway. If others are comfortable with it, that’s fine with me.

  26. First, In re Hakim wasn’t really about doctrine of equivalents; it was about claim scope disavowal.

    I think you need to add a bit to that statement. Your Venn diagram circles overlap extensively.

    I also don’t think that a “very case-specific notice” is required. If a broad notice is applied in a particular case and is thus present in that case, it then applies. There does not appear to be a requirement for “magic words” of specificity.

    Generally speaking, boilerplate only becomes boilerplate when its use is at least minimally useful.

  27. The Fed. Circuit held in In re Hakim that inclusion of such a disclaimer in both parent and child will prevent prosecution history from being imputed from parent to child for the purposes of the doctrine of equivalents analysis.

    I don’t think that is correct, Nick. First, In re Hakim wasn’t really about doctrine of equivalents; it was about claim scope disavowal. Second, the court nowhere suggested that a boilerplate disclaimer in both the parent and child were effective to do anything. Instead, the court said:

    Although a disclaimer made during prosecution 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.

    This seems to suggest that a very case-specific notice to the examiner in the continuation application is required. I don’t think boilerplate will do it.

  28. This is a typical Hakim disclaimer. These are very common. I use one that is somewhat similar. The Fed. Circuit held in In re Hakim that inclusion of such a disclaimer in both parent and child will prevent prosecution history from being imputed from parent to child for the purposes of the doctrine of equivalents analysis.

  29. Agree with the thoughtful comment above; a boilerplate statement like that is likely to be entirely meaningless.

    In fact, one can imagine a situation where a statement like that could actually be used to support a disavowal in litigation. As a litigator, I can tell you that courts do NOT like self-serving boilerplate statements that are designed to achieve some perceived benefit in future litigation. Courts take pride in gleefully pronouncing those statements to have no effect. And in many cases, a statement like that could then be used by a defendant as proof that the applicant acknowledged the possibility that the arguments it made might constitute a disclaimer or disavowal.

  30. The question is: Does the amendment leave any space between the prior art and the new claim language that the applicant would otherwise be entitled to?

    Without that statement, you may be saying that you’re giving up that space.

    With the statement, you’re saying that you are not giving it up intentionally and may come back for it if it comes up.

  31. “As a matter of professional pride we should all be happy to see the state of our art advance.”

    Huh? How is adding language that you didn’t even write yourself, and probably didn’t even bother to read yourself, and will certainly be ignored by the examiner, and most likely ignored by your competitors and the court, advancing the state of our art?

  32. As some earlier comments noted, the value of such statements is lessened if used in every response, and/or if further applications are not filed.

    If I think a rejection is improper but can be addressed with an innocuous amendment, and the applicant wants to move things along and keep cost down, I will often make the amendment and include a statement to that effect.

    Likewise, if an examiner is prepared to allow narrow claims but the applicant is entitled to a greater scope of protection, we will sometimes take the allowable subject matter and pursue broader claims in a continuation. The right to do so is right there in 35 USC – no need to “reserve” it with boilerplate response language.

  33. Meaning no disrespect, that’s a very skillful use of the ad hominem argument there, Steve. I’m not persuaded by the “everyone else is (or will be) doing it argument, either.”

    I’m just having trouble contemplating a situation where this boilerplate is likely to be of much use. It’s not likely to preserve the doctrine of equivalents for your amended claim features. Case history on actual disavowal is actually pretty favorable to the applicant – it must be “clear and unmistakable, as I recall.” Likewise, I don’t think the PTO or the courts have been very aggressive in finding that unclaimed subject matter has been dedicated to the public, so long as the applicant eventually gets around to claiming it. So, exactly what problem does this boilerplate solve?

  34. Essentially, this is asking the Examiner to accept arguments that the Applicant is stating are meaningless. “Just because I say that this prior art reference doesn’t anticipate my claims doesn’t mean that my claims don’t cover it.” If prior art arguments don’t narrow the claims, then what are they doing.

  35. If you have not been using this kind of boilerplate, you naturally will question its merit and discount it. This explains why the early comments are critical and look like reflexive defense. Like so much else we do, this kind of boilerplate will eventually become the norm, and failing to include it could be viewed as substandard work. The sensible approach for an attorney is to either make a reasoned decision to adopt this kind of boilerplate and document that rationale, or adapt it and sleep better. As a matter of professional pride we should all be happy to see the state of our art advance.

  36. Unfortunately, it has become necessary to call out that a ridiculous rejection is BS, but the show must go on anyway.

    Or you could Appeal Everything(TM), which would make the boilerplate language even less credible.

  37. In the Kafkaesque world of the PTO, there is NO definition of what is patentable subject matter, and the insane body of rules is constantly changing (and/or the interpretation is changing). There is no way to know what will be allowable next week and examiners regularly punt applications for unintelligible and nonsensical reasons.

    Unfortunately, it has become necessary to call out that a ridiculous rejection is BS, but the show must go on anyway.

  38. This seems like a very transparent way to backdoor a broader patent.

    “Although we are (potentially) changing material details of our patent pending item, we want patent protection of the original concept and all inclosed changes.”

    Not a lawyer yet, but to me it’s silly.

  39. “I can only assume that this is meant as a CYA for malpractice purposes in case things go horribly wrong during litigation.”

    It’s as useful for that purpose as it is for purposes of prosecuting the application(s).

  40. Aside from considering whether a reissue is broadening or not, I’m not aware of any situation where an examiner would verge into the bounds of that boilerplate language. And I’m guessing that a judge’s eyes would glaze over just as mine did while reading that. So, I can only assume that this is meant as a CYA for malpractice purposes in case things go horribly wrong during litigation.

  41. Just the predictable result of ridiculous court rulings and pronouncements. A Court limits the claims based on statements regarding the “invention” in the specification, so now we don’t use the word invention any more. Courts say use of the word step implies the recited order is important, so now the word “Step” is verboten. A court says if you amend the claim, the original claim must not have been allowable, so now we have to say we are amending in the interest of moving things along and not slowing down prosecution over quibbles. sigh…

  42. What do you think of the following boiler-plate language that some applicants are including in their office-action responses:

    I think it’s perfectly meaningless if it’s being used as “boilerplate” in every single response, regardless of what is actually being cited, argued, or amended. It’s clearly self-serving and no reflection of the applicant’s specific intent in prosecuting the present application. It’s also funny that the applicant is telling future reviewers of the future prosecution history of other related applications that might not even exist yet what they are not allowed to reasonably infer.

    Actions will speak louder than words in court. If you narrow the claims by amendment to overcome an art rejection, argue patentability based on the limitations you added, and then don’t pursue at a later date any previously pending or other broader or narrower claims, the court will brush off the boilerplate language with the legal equivalent of “come on, you always say that”. Counterclaimants in invalidity will even point to other cases prosecuted by the same applicant/firm, where the same boilerplate language is blatantly at odds with the rest of the prosecution history.

    If you want a statement that you’re not surrendering claim scope to be meaningful, only say it when you mean it. It might require a bit of extra brainpower, but that’s what our clients pay us for.

  43. “Applicant reserves the right to pursue at a later date any previously pending or other broader or narrower claims that capture any subject matter supported by the present disclosure, including subject matter found to be specifically disclaimed herein or by any prior prosecution.”

    Some old timers warned me not to use language like this because if you don’t pursue at a later date it may be argued that you gave up the rights you were supposedly reserving.

    But whatever.

  44. Outside of the misspelling of disavowal I don’t think much of it. It is probably as useful as any other boilerplate language, which is to say not very much.

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