IP Briefs: The Positive Side of Negative Disclaimers - A new patent application can be rejected over an existing patent that was not publicly available when the new application was filed. Sometimes, t

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IP Briefs: The Positive Side of Negative Disclaimers
A new patent application can be rejected over an existing patent that was not publicly available when the new application was filed. Sometimes, this can be resolved by adding a negative disclaimer to the new filing.


BioPharm International
Volume 20, Issue 6

Several other US cases also suggested that the law favored allowing applicants to insert undisclosed disclaimers into patent claims. In 1977, the court stated that the idea that one who fully discloses and teaches how to make and use a genus and numerous species therein, has somehow failed to disclose that genus minus two of those species, was said to result in an overly-legalistic application of the law.3 In holding that to deny applicants the ability to narrow claims to a subgenus simply because there is no express support in the specification would be to demand that patent applicants be all knowing and foretell what prior art be cited so that they can layer their claim scope accordingly throughout the disclosure. Applicants would have to "either prophetically divine what the art contains, or they must lay down a barrage of claims, starting with the widest and proceeding by the successive incorporation of more and more detail, until all combinations have been exhausted."4

Despite these early cases holding that undisclosed disclaimers are permissible, the law today has changed, making it more difficult to add an undisclosed disclaimer to pending claims in a US application. In finding that addition of a negative disclaimer to a pending claim introduced concepts not described in the application as originally filed, the court in 1984 established that any negative disclaimer or exclusionary proviso had to find support in the patent application as filed.5 Indeed, this is the rule currently applied by patent examiners in the US, where a negative disclaimer which does not have basis in the application as filed is generally impermissible.

However, two non-precedential cases in 1996 seem to soften this approach. In one case, a decision to permit addition of a disclaimer to the claims was permitted because the application as originally filed suggested that the applicant possessed the idea of the invention absent the disclaimed subject matter.6 In the other case, the patent applicant was able to expressly limit the claims so that they included only a portion of the whole invention, on the grounds that a description of the whole invention in the application as filed also describes a portion of the whole invention.7 These cases suggest that an applicant in the US may use a negative disclaimer that is not expressly set forth in the application at the time of filing in situations where the application as filed conveys that selected portions of the invention may be excised.

DISCLAIMERS IN EUROPEAN PATENTS

The European approach is more thoughtful, and perhaps more enlightened. In 2004 a ruling body8 in Europe held that disclaimers may be allowable in certain situations, including to restore novelty by delimiting a claim against (i) a patent application that was filed, but unpublished, at the time of applicants filing and (ii) an "accidental anticipation."

The first case, point (i), is the situation noted above in the introductory paragraphs. Specifically, in the situation where a patent examiner identifies a patent publication that was filed at a patent office, but not yet published, at the time of filing the applicant's patent application, a disclaimer can be added to the claims to exclude the subject matter set forth in the prior art patent publication. This is a sensible rule, since the applicant at the time of filing her application could not have known about the subject matter set forth in the earlier filed document because it had not yet been published. It is disappointing that the US patent system does not provide for a similar, sensible approach to restore novelty to a patent claim by subtracting from its claim scope the subject matter in the prior art patent publication.

With respect to situation (ii), an "accidental anticipation" refers to a document that is "so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention."9 A disclaimer to excise the prior material from the scope of the pending claim is permitted in this situation. For example, consider a patent claim to a group of chemical compounds, small molecules or peptides, for use in treating cancer. Suppose a single compound falling within the claimed group of compounds is described for a completely different use, e.g., developing photographic film, in an "accidental" anticipatory document. The European patent office acknowledges that it would be unfair to bar patenting the use of the entire group of compounds for treating cancer simply because the application as filed did not contain basis for a limiting amendment excluding the irrelevant use, developing photographic film. On these facts, the applicant would be allowed to include a disclaimer in the pending claims to remove from the scope of the claims use of the single compound in developing photographic film.

Another example illustrates a situation where an accidental anticipation was found not to exist. In this case, compounds in the anticipating document were described as "good therapeutics" and as having "valuable therapeutic properties" while the claimed compounds were "for use as a medicament."10 Reasoning that this was not a case of accidental anticipation because the anticipatory document belonged to the same technical field as the claimed invention, a disclaimer to the compounds described in the anticipatory document was not permitted.


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