The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Jan 28th, 2023, 12:39am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Patent Filing and Prosecution
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Canceling claims without prejudice or disclaimer
« Previous topic | Next topic »
Pages: 1  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Canceling claims without prejudice or disclaimer  (Read 8033 times)
Patentagent!
Guest
Canceling claims without prejudice or disclaimer
« on: Aug 27th, 2006, 9:34pm »
Quote Quote Modify Modify Remove Remove

The partner I work for always cancels claims saying it is without prejudice or disclaimer.  What is he referring to?  I apologize if this is an ignorant Q.
IP Logged
wallflower
Junior Member
**




   


Posts: 96
Re: Canceling claims without prejudice or disclaim
« Reply #1 on: Aug 27th, 2006, 10:02pm »
Quote Quote Modify Modify

I'm guessing it's meant to reserve the right to later pursue the cancelled claims.  Or maybe it's meant to prevent any potential estoppel resulting from cancelling the claims.  In any case, I don't see the need for it.
 
As an aside, why don't you simply ask the partner?
IP Logged
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: Canceling claims without prejudice or disclaim
« Reply #2 on: Aug 27th, 2006, 10:10pm »
Quote Quote Modify Modify

It's sort of like telling a girl after a date that you'll call her.  It's well meaning but of little value unless you follow through with it.
 
"Without prejudice" means that you never had the claim fully and completely determined to be unpatentable.  It's like a villian in a comic book saying "this isn't over!  I'll be back!"
 
"Without disclaimer" is similar but I suppose a little different.  It means (to me, anyway) that cancelation of the claim is not meant to "disclaim" part of the invention -- that you're not dedicating the matter covered by that claim in particular to the public.
 
However, neither of those are effective in my opinion.  If you don't come back to prosecute a canceled claim while you still can (while copendency is still alive and well), you've pretty much acquiesced and "without prejudice" doesn't help you.  If you do come back and pursue that claim, failure to include "without prejudice" doesn't hurt you.  So, the phrase seems pretty much superfluous.
 
If a claim remains canceled, you pretty much have disclaimed whatever that claim covered (unless also covered by an issued claim).  Saying you didn't disclaim anything doesn't help you.  In addition, failing to say you don't disclaim anything doesn't hurt you if you legitimately come back to pursue the canceled claim (e.g., in a continuation application or by re-adding the claim later or in a reissue application or whatever).
 
To further illustrate my point, be consider the value of this statement:  This is not the last sentence of this post.
IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Pages: 1  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright 2000-2004 Yet another Bulletin Board