Disclaimers to avoid post-grant review: a warning


Jon Carter and W Todd Baker

Disclaimers to avoid post-grant review: a warning

Vadim Sazhniev / Shutterstock.com

Statutory disclaimers to avoid institution at the Patent Trial and Appeal Board should be used cautiously, warn Jon Carter and W Todd Baker of Kirkland & Ellis.

A post-grant review (PGR) petition can challenge the validity of a patent that contains at least one claim with priority after March 16, 2013, the date the America Invents Act (AIA) went into effect (AIA claims).

Many patents that are eligible for PGR, however, include claims with priority before this date (pre-AIA claims). So what happens when a patent owner statutorily disclaims all of its AIA claims, while maintaining the pre-AIA claims, in an effort to avoid PGR institution?

The PTAB answered this question for the first time in RetailMeNot v Honey Science, where it held in a non-precedential opinion that a disclaimer of all AIA claims does not defeat the patent’s eligibility for PGR (PGR2019-00060, Paper 17 at 14 [March 10, 2020]).

Kirkland & Ellis, post-grant review, PTAB, AIA, patents, provisional application, USPTO, statutory disclaimer