What are Disclaimers in a patent application?
Under the Indian Patents Act, one of the permissible ways of entering the amendment is to incorporate ‘Disclaimers’. Disclaimers are usually defined for removal of doubts with respect to a particular aspect/feature of the claimed subject matter of a patent application. Disclaimers can be used a) in claims b) in written description of the specification, mostly during the prosecution or post-grant stage.
Purview of Disclaimers
Matter disclaimed in ‘Disclaimers’ may be aimed at disclaiming non-statutory subject matter from claims; however it falls under the purview of the as-filed claimed subject matter. A Patent applicant/ holder can provide a) an explanation to clarify the scope of the invention in light of prior art and, b) further information pertained to a matter already disclosed in the description in the as-filed specifications.
Why disclaim?
Disclaimers can be used for restoration or clarification of novelty of the claimed subject matter against a cited prior art. A Patentee may disclaim certain features within a patent as part of a settlement agreement during patent litigation. If a claim or claims are considered to be too broad or otherwise invalid, the patent holder can choose to disclaim those portions of claims, to close litigation.
What information is allowed/ not allowed in Disclaimers?
Information in Disclaimers can only be used for clarification on disclosed subject matter. It can also be elaborative in nature. However, anything that broadens or alters the scope of the invention is not permissible. Usage of new terms and phrases (not used before in the patent specification) may be permissible as a part of ‘disclaimer’ to illustrate the technical contribution, but the essence of the technical contribution as originally captured through the as-filed subject matter must remain undisturbed.
Word of caution
Disclaimers shoould be drafted in a manner such that they are not considered as relevant for determining the requirement of ‘sufficiency of disclosure’. The disclaimer should be skillfully drafted by the patent applicant/patentee so as to exclude only such subject matter that constitutes prior art for the invention and not beyond that. Further, during the course of drafting such disclaimers that are aimed at excluding non-statutory subject matter from the claims or projecting the invention as ‘patentable’, one should keep in mind ‘only’ the excluded categories as defined under corresponding legislation.
Also, Claims/ Description amended through the incorporation of the disclaimers shall remain clear and definite.
Please remember the in Indian Patent Law “What is not Claimed in a Patent, stands disclaimed”
Case Laws:
1. AGC Flat Glass Europe SA vs Anand Mahajan
2. Solvay Fluor GmBH. v. E.I. Du Pont de Nemours and Company