RESOLVED, that IPO supports an amendment to 37 C.F.R. § 42.73(b) as follows (strikeout indicates deletion, underscoring indicates addition):
“A party may request judgment against itself at any time after institution during a proceeding
trial. Actions construed to be a request for adverse judgment include:
(1) Disclaimer of the involved application or patent;
(2) Cancellation or disclaimer of a claim such that the party
has no remaining claim in the trial;
(3) Concession of unpatentability or derivation of the
contested subject matter; and
(4) Abandonment of the contest.”
FURTHER RESOLVED, that IPO supports amendments to 37 C.F.R. §42.107(e) and
§42.207(e) as follows:
(e) Disclaim Patent Claims. The patent owner may file a statutory disclaimer under 35
U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims
in the patent. When such disclaimer is filed prior to institution of a trial, such disclaimer shall
not be construed as a request for an adverse judgment under 37 C.F.R. 42.73(b). No inter
partes review will be instituted based on disclaimed claims.
FURTHER RESOLVED, that IPO does not currently take a position on whether the U.S.
Patent and Trademark Office had authority to adopt 37 C.F.R. § 42.73(d)(3).
