Patently-O

SEPTEMBER 21, 2022

The chart above shows the number of disclaimed/dedicated patents per year going back to 1995. Every year it has been a relatively small number, and for each instance there is usually some strategic reason for the disclaimer. As you can see, FY2022 is figuratively off the charts–almost triple any year since 2005.

Patent 78

Patent 78

Erik K Pelton

SEPTEMBER 21, 2020

Watch this brief (under 3 minutes) video explain what a trademark ” disclaimer” is and what they mean in trademark applications and registrations. The post What is a “disclaimer” in a trademark filing? appeared first on Erik M Pelton & Associates, PLLC.

Trademark 130

Trademark Registration 130

43(B)log

MARCH 29, 2024

The remainder of the disclaimer is concealed by a tab; the concealed portion reads, in part, “not all systems can accept flushable wipes.” To avoid a finding of plausible deceptiveness, disclaimers or qualifications must be “sufficiently prominent and unambiguous. If a problem is noticed, dispose of in trash and stop flushing.

Law 59

Law Advertising Advertising Branding 59

The IPKat

JUNE 19, 2023

In this regard, trade mark disclaimers exist to ‘free up’ non-distinctive and/or insufficiently distinctive parts of a trade mark while saving the parts of such mark that are distinctive. Following from this, a trade mark proprietor would not be permitted to sue for infringement in respect of the use of a disclaimed feature.

Registration 78

Registration Business 78

JD Supra Law

JUNE 20, 2023

the Federal Circuit held that a disclaimer made in an inter partes review (IPR) proceeding was not binding in that proceeding, i.e., the disclaimer is not binding in the proceeding in which it is made. However, a disclaimer in an IPR proceeding is binding in later proceedings, whether before the patent office or in court.

Patent 59

Patent 59

The IPKat

APRIL 27, 2023

The IPKat has received and is pleased to host the following guest contribution by Katfriend Henning Hartwig (Bardehle Pagenberg) on the EU Commission’s recent proposal to codify visual disclaimers in EU design law. This is particularly true for the Commission’s proposal to codify visual disclaimers in case of partial designs.

Designs 89

Designs Design Law Intellectual Property 89

The TTABlog

JANUARY 18, 2024

By my count, in 2023 the Board issued final decisions in 60 appeals from Section 2(e)(1) mere descriptiveness refusals or from disclaimer requirements based on mere descriptiveness. HEALTH PERKS for "Providing information in the fields of health and wellness" [Disclaimer requirement]. That's an affirmance rate of about 93%. pdf here ].

Technology 75

Technology Designs Design Copyright 75

Patently-O

NOVEMBER 16, 2022

Trend Micro includes a big discussion on treatment of disclaimers. The court noted that the statements could be reasonably interpreted in more than one way and thus failed to meet the high burden of prosecution disclaimer. The statute does discuss disclaimer under Section 253, but this is disclaimer of a claim as a whole.

Art 56

Art Law Patent 56

JD Supra Law

NOVEMBER 22, 2022

years ago holding that patent owner statements made in an IPR proceeding may “support a finding of prosecution disclaimer during claim construction.” That decision left unresolved an important question—whether disclaimer statements apply in the same IPR proceeding in which they’re made.

Patent 98

Patent 98

JD Supra Law

APRIL 4, 2022

Summary: A finding of prosecution disclaimer must be supported by an unambiguous disavowal within the intrinsic record. GENUINE ENABLING TECHNOLOGY LLC V. NINTENDO CO., LTD - Before Newman, Reyna, and Stoll. Appeal from the Western District of Washington. By: Knobbe Martens

Technology 98

Technology 98

Patently-O

APRIL 10, 2022

1, 2022), shows us subtle dividing lines between applicant statements (1) that create a disclaimer compared with those (2) that are merely helpful for interpretation. Similarly, a patentee may disclaim or disavow claim scope. I see disclaimer as an examination failure. Nintendo Co., 2022 WL 982246 , — F.4th Raytek Corp. ,

Invention 81

Invention Art Litigation Patent 81

JD Supra Law

SEPTEMBER 15, 2023

Copyright Office Rejects Application for Refusal To Disclaim AI-Generated Elements - The U.S. Copyright Office has once again refused to register a visual work that included elements generated using artificial intelligence (AI). In this most recent case, the work was a digital work submitted by Jason M.

Copyright 73

Copyright 73

IP Law 360

JULY 3, 2023

Recent challenges encountered by design patent owners seeking adverse judgments at the Patent Trial and Appeal Board show these owners should consider the unique nature of such claims when preparing statutory disclaimers needing a swift resolution, say Kelly Horn and Elizabeth Ferrill at Finnegan.

Designs 52

Designs Design Design Patent Patent 52

LexBlog IP

DECEMBER 16, 2022

the Court made the precedential holding that the Patent Trial and Appeal Board (“the Board”) is not bound by a party’s disclaimer in the very IPR proceeding in which it is made, just as a disclaimer in a district court proceeding would not bind the district court in the same proceeding. [1] Trend Micro Inc. ,

Patent 52

Patent Intellectual Property 52

JD Supra Law

JANUARY 23, 2023

that a disclaimer in an inter partes review (IPR) proceeding is not binding on the USPTO in the same proceeding in which the disclaimer is made. The Federal Circuit recently held, in Cupp Computing AS v. Trend Micro Inc., By: Jones Day

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52

JD Supra Law

DECEMBER 19, 2022

the Court made the precedential holding that the Patent Trial and Appeal Board (“the Board”) is not bound by a party’s disclaimer in the very IPR proceeding in which it is made, just as a disclaimer in a district court proceeding would not bind the district court in the same proceeding. Trend Micro Inc.,

Patent 52

Patent 52

JD Supra Law

APRIL 6, 2022

10,857,231 (the ’231 Patent) after Regeneron disclaimed the patent. On March 15, 2022, the Patent Trial and Appeal Board (PTAB) denied institution of post-grant review (PGR) proceedings initiated by Celltrion Inc. concerning Regeneron Pharmaceutical’s U.S.

Patent 102

Patent 102

JD Supra Law

SEPTEMBER 7, 2023

The Federal Circuit’s decision will likely change prosecution practice and cause applicants to.

Patent 68

Patent 68

JD Supra Law

NOVEMBER 21, 2022

Summary: Patent Owners cannot attempt to narrow claims by disclaiming claim scope during an IPR proceeding. CUPP COMPUTING AS v. TREND MICRO INC. OPINION] - Before Dyk, Taranto, and Stark. Appeal from Patent Trial and Appeal Board. By: Knobbe Martens

Patent 52

Patent 52

JD Supra Law

AUGUST 4, 2021

June 16, 2021), the Patent Trial and Appeal Board (“PTAB”) held that disclaimed claims should be considered for post-grant review (“PGR”) eligibility. The PTAB had previously held that disclaiming claims is…. Regents of the Univ. of Colorado, No. PGR2021-00026, Paper 12 (P.T.A.B. By: Jones Day

Patent 55

Patent 55

The TTABlog

FEBRUARY 24, 2022

Under Section 6(a) of the Trademark Act, "[t]he Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable." Here are three recent TTAB decisions involving refusals based on Section 6(a) disclaimer requirements. At least one of the refusals was reversed. Answer in first comment].

Music 59

Music Designs Design Registration 59

JD Supra Law

NOVEMBER 30, 2022

Repeating a conclusion from an earlier non-precedential opinion in VirnetX, the US Court of Appeals for the Federal Circuit held that the Patent Trial & Appeal Board (Board) need not accept a patent owner’s arguments as a disclaimer in the very same inter partes review (IPR) proceeding in which those arguments are made.

Patent 40

Patent 40

LexBlog IP

AUGUST 14, 2023

Regeneron’s motion to terminate is based on Regeneron’s filing of a statutory disclaimer of all claims of the ‘226 patent. Previously, in response to other IPR petitions, Regeneron has disclaimed one of its formulation patents, U.S. The motion indicates that Petitioner Celltrion does not oppose the motion. 10,888,601.

Patent 40

Patent Intellectual Property 40

JD Supra Law

MARCH 30, 2022

Regeneron”) filed a statutory disclaimer under 37 CFR § 1.321 disclaiming all claims of U.S. On March 14, 2022, Regeneron Pharmaceuticals Inc. 10,857,231 B2 (the “’231 patent”) in response to a petition for a post-grant review submitted by Celltrion Inc. Celltrion”).

Patent 52

Patent 52

JD Supra Law

DECEMBER 20, 2022

The Federal Circuit recently held that a Patent Owner could not use disclaimers argued in an IPR proceeding for claim construction within the same IPR proceeding. In CUPP Computing AS v. Trend Micro Inc.,

Patent 55

Patent 55

LexBlog IP

APRIL 6, 2022

10,857,231 (the ’231 Patent) after Regeneron disclaimed the patent. In the decision denying institution, the PTAB stated that on March 14, 2022, Regeneron had notified the PTAB that it intended to disclaim the ’231 patent. The same day, Regeneron also filed a Notice of Disclaimer with the U.S.

Patent 52

Patent Trademark Intellectual Property 52

Patently-O

DECEMBER 17, 2021

I’m trying an open authorship model for a new short paper asking the question: Is it Time to Eliminate Terminal Disclaimers ? I just wrote 150 words, and so it is 3% of the way toward a 5,000 word goal. If we get to 5,000 coherent words, then I’ll make sure it gets published — probably in some fancy law journal.

Journalism 56

Journalism Editing Publishing Law 56

JD Supra Law

OCTOBER 14, 2021

Summary: An applicant’s arguments distinguishing prior art during patent prosecution constituted a disclaimer of claim scope and estopped the patentee from relying on the doctrine of equivalents to show infringement. NOKIA SOLUTIONS AND NETWORKS Before Prost, O’Malley, and Stoll. Appeal from the Eastern District of Texas. By: Knobbe Martens

Patent Prosecution 52

Patent Prosecution Art Technology Patent 52

JD Supra Law

DECEMBER 5, 2022

OVERVIEW - The United States Court of Appeals for the Federal Circuit recently affirmed three Inter Partes Review (IPR) final written decisions of the U.S. Patent Trial and Appeal Board (“the Board”) where the Board concluded that petitioner, Trend Micro.

Patent 98

Patent 98

IP Law 360

MAY 26, 2022

The Patent Trial and Appeal Board's recent Cellect decision illustrates the problem of overreach in current terminal disclaimer practice; and separating the disclaimer instruments would preserve obviousness double patenting, avoid unwholesome incentives for applicants and better serve equity, say Vincent Shier and Joseph Matal at Haynes and Boone.

Patent 40

Patent 40

IP Law 360

NOVEMBER 29, 2022

Patent and Trademark Office can protect consumers by ending its unnecessary requirement that companies disclaim trademark registration for their cannabis goods when they seek to establish brand protection for other products, say Sam Kamin and Viva Moffat at the University of Denver.

Branding 40

Branding Brands Branding Registration 40

The TTABlog

JANUARY 11, 2023

In 2022, by my reckoning, the Board issued final decisions in 51 appeals from Section 2(e)(1) mere descriptiveness refusals or from disclaimer requirements based on descriptiveness. The Board found each mark to be unitary, and therefore disclaimers were not required. The Board affirmed 45 of the refusals and reversed 6 refusals.

Designs 52

Designs Design Copyright 52

IP Watchdog

NOVEMBER 1, 2023

Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision holding that a Delaware district court erred in its claim construction of a term with respect to Malvern Panalytical, Inc.’s

Patent Prosecution 59

Patent Prosecution Patent Patent Infringement Litigation 59

LexBlog IP

AUGUST 17, 2022

And it is noteworthy that the court takes a very dim view of the use of disclaimers to modify claims. As the enhanced disclaimer remains inscrutable, the Court provides the relevant text below after having significantly magnified the text. At times, with complaints comes knowledge, and that can lead to potential individual liability.

Litigation 52

Litigation Advertising Advertising Reporting 52

JD Supra Law

OCTOBER 7, 2021

In an interesting recent case of first impression, Judge Albright in the Western District of Texas denied a motion for judgement on the pleadings filed by Defendants Google and YouTube because the asserted patent was terminally disclaimed to two other patents that had been invalidated prior to its issuance. In VideoShare, LLC v.

Patent 52

Patent Intellectual Property 52

JD Supra Law

AUGUST 31, 2023

IN RE CELLECT, LLC - Before Lourie, Dyk, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Obviousness-type double patenting analyses for patents with Patent Term Adjustments are based on the adjusted expiration date of the patent. By: Knobbe Martens

Patent 65

Patent 65

The TTABlog

MAY 11, 2022

In what may be one of the biggest wastes of time in the history of trademark jurisprudence, the Board reversed the USPTO's requirements that LEGO disclaim the word KID , in both Latin and non-Latin characters, in the two marks shown below, for various goods and services primarily aimed at children. In re EBS Data Processing, Inc.,

Designs 52

Designs Design Trademark Registration 52