The existence of a mistake by an attorney, other than the type falling under § 255 or a lack of actual authority from a client, is not sufficient grounds to withdraw a terminal disclaimer. Here, for example, a miscommunication about the desire to file a terminal disclaimer was found to be insufficient to withdraw it once duly filed. It may therefore be best to ensure and double check that specific authorization is received for all terminal disclaimers before filing.
Background / Facts: Based on what is characterized as a miscommunication between an in-house counsel paralegal and outside counsel about accelerating abandonment of an issued patent, the attorney of record responsible for the prosecution of the patent filed a statutory disclaimer pursuant to 37 C.F.R. § 1.321(a) with the PTO, disclaiming “the entire term of all claims in [the patent]” and requesting that the disclaimer be “duly recorded.” Shortly thereafter, the patentee petitioned the PTO to withdraw the terminal disclaimer because it was “erroneous and unauthorized.”
Issue(s): Whether the PTO is statutorily authorized to withdraw a terminal disclaimer that was duly but undesirably filed by an attorney of record because of a miscommunication.
Holding(s): No. “The PTO declined to delve into the record and evaluate the merits of the [patentee’s] assertion. The PTO instead determined that it need not examine alleged miscommunications between the patentee and its attorney of record because of the principle that it holds the patentee to be ‘bound by the actions or inactions of his voluntarily-chosen representative.’ [] The PTO, apart from a clerical error under § 255, ends its inquiry into attorney authorization once it determines that the attorney of record signed the disclaimer, as required by regulation.” The filing of a disclaimer is not itself a “clerical or typographical error” that may be corrected under § 255. “[T]he [patentee] has not identified an error in the patent number or application that is apparent on its face—like a transposed number or the number of a related patent— which would entail redirecting the disclaimer to the correct target.”