“Continuation Practice” is a common tactic employed by patent applicants; that is, after obtaining an allowance of a patent application, an applicant files a continuation application to attempt to obtain additional or broader claim scope based on the originally filed disclosure. Often, the applicant takes the claims allowed in the first application and then wants to file a continuation application to seek claims of a broader scope. Applicants must, however, be aware of potential pitfalls when drafting continuation claims. In particular, filing claims in a continuation application with subject matter that was “disclaimed” in the earlier application may result in invalid continuation claims, as well as potentially exposing the applicant to an inequitable conduct lawsuit.

How is Claim Scope Disclaimed?

Claim scope is generally disclaimed either by argument or amendment. See Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, 15 F.4th 1136, 1146 (Fed. Cir. 2021).  For example, if a claim is amended to overcome prior art cited by an Examiner, the pre-amendment claim scope is generally considered disclaimed. Additionally, if an argument is presented during prosecution to overcome cited art, an interpretation of the claim language that was argued against may be considered disclaimed.

How to Overcome Disclaimer?

When it is clear that claim scope has been disclaimed, the best course of action is to avoid attempting to re-claim the disclaimed subject matter in a subsequent application. This ensures that all members of a patent family are consistent and are robust against arguments related to disclaimer. But when an applicant wants to try and overcome a previous disclaimer, all is not lost. A previous disclaimer can potentially be overcome by rescinding the disclaimer. For example, the Federal Circuit has held that claim scope may be recaptured if the prosecution history of the continuation application is “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.” Hakim v. Cannon Avent Grp., PLC, 479 F.3d 1313, 1318 (Fed. Cir. 2007).

As such, one way to successfully rescind a previous disclaimer is to explicitly state in a paper filed with the USPTO that no limitations or disclaimers from previous prosecution or application is to be read into the pending claims. Advantageously, exemplary language, that was submitted in response to an Office Action in a continuation application and was deemed to be a successful rescission of a disclaimer is available: “No limitations or prosecution disclaimers on the language of the claims should be imported into any claim from earlier prosecution or prior versions of the claims or prior patents, and it will be assumed that no such importing is being conducted unless a statement is made by the PTO that it is doing so.” Luv N’ Care, Ltd. v. Jackel Int’l Ltd., 115 F. Supp. 3d 808, 819 (E.D. Tex. 2015).

How Can Lack of Rescission Lead to Inequitable Conduct?

There is an important downside to seeking to obtain claim scope that has been disclaimed without including the type of clarifying language set forth above; namely, it opens the door to a defense of inequitable conduct. Specifically, the Federal Circuit has held that failure to disclose an Office Action containing a claim rejection from a related patent application can lead to a finding of inequitable conduct. McKesson Info. Solutions v. Bridge Medical, 487 F.3d 897, 913 (Fed. Cir. 2007). The rationale from McKesson was held to extend to the disclaimer situation discussed in this article. Wyeth v. Wockhardt Ltd., No. CV 07-5166 JVS (ANx), 2008 U.S. Dist. LEXIS 126736, at *6-7 (C.D. Cal. May 29, 2008). In particular, the Applicant in Wyeth disclosed a previous related application as prior art, but failed to disclose that identical or substantially identical claims were rejected in prosecution of the related application. The court did not dismiss the inequitable conduct claims brought against the applicant and determined that a claim for relief is plausible based on a lack of disclosure of the previous rejection. Notably, this view is not universal, though. Other District Courts have determined that inequitable conduct cannot be found based on a lack of disclosure of previous rejections. See Color Kinetics Inc. v. Tir Sys., No. 03-CV-12491-MEL, 2007 U.S. Dist. LEXIS 107666, at *6-7 (D. Mass. Feb. 8, 2007) (“CK therefore did not shirk its duty to disclose because there was no requirement to present information which was already in the parent application was material information which required additional disclosure.”).

Takeaway

The first step in drafting claims for a continuation application should be to understand the scope of potential coverage including any claim scope that has been previously disclaimed. If previously-disclaimed scope is desired, a recission of the disclaimer must be clear in the prosecution history.

 

 

 

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