The court reversed the lower court’s decision that the PTO acted arbitrarily and capriciously, and abused its discretion, when it refused to allow a patent owner to withdraw a disclaimer of all claims for the entire term of the issued patent.  After learning that the disclaimer was mistakenly filed by the attorney of record, based on erroneous instructions from the client, the patentee petitioned to have the disclaimer withdrawn.  The court held that there was no basis for withdrawing the disclaimer by means of a certificate of correction under Section 255, as the petition seeks withdrawal of a disclaimer having no errors other than the fact of its filing, and the PTO lacks inherent authority to withdraw the disclaimer, because there was no administrative determination to be reconsidered, the only determination being the disclaimer itself met the statutory requirements.

Japanese Foundation for Cancer Research v. Lee, Case No. 2013-1678, 2014-1014  (December 9, 2014); Opinion by: Prost, joined by Dyk and Taranto; Appealed From: Eastern District of Virginia, Trenga, J.  To read the full opinion, click here.  

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