U.S. Code » Title 35 » Part PART III— PATENTS AND PROTECTION OF PATENT RIGHTS › Chapter CHAPTER 25— AMENDMENT AND CORRECTION OF PATENTS

35 U.S.C. § 253

Disclaimer

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(a)In General.—Whenever a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.(b)Additional Disclaimer or Dedication.—In the manner set forth in subsection (a), any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.(July 19, 1952, ch. 950, 66 Stat. 809; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 112–29, § 20(e), Sept. 16, 2011, 125 Stat. 334.)Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., § 65 (R.S. 4917).

Language is changed and substantive changes are introduced; (1) only a claim as a whole may be disclaimed, and (2) the provision regarding delay is omitted. See preliminary general description of bill.

See section 288.

The second paragraph is new and provides for the disclaiming or dedication of an entire patent, or any terminal part of the term, for example, a patentee may disclaim the last three years of the term of his patent.

Editorial NotesAmendments

2011—Pub. L. 112–29 designated first and second pars. as subsecs. (a) and (b), respectively, inserted headings, in subsec. (a), substituted “Whenever” for “Whenever, without any deceptive intention,”, and, in subsec. (b), substituted “In the manner set forth in subsection (a),” for “In like manner”.

1975—Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”.

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1975 Amendment

Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade.

Notes of Decisions
Cited in 149 cases (18 in the last 5 years), 1953–2025 · leading case: Vectra Fitness, Inc. v. Tnwk Corp. (Formerly Known as Pac. Fitness Corp.), 162 F.3d 1379 (Fed. Cir. 1999).
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Vectra Fitness, Inc. v. Tnwk Corp. (Formerly Known as Pac. Fitness Corp.), 162 F.3d 1379 (Fed. Cir. 1999). · cites it 10× “On February 16, 1990, Vectra submitted a disclaimer to the United States Patent and Trademark Office (PTO), in accordance with 35 U.S.C. § 253 . The disclaimer canceled Claims 1, 2, 3, 4, 13, 20, 21, and 24.”
Boehringer Ingelheim Int'l GmbH v. Barr Labs., Inc., 592 F.3d 1340 (Fed. Cir. 2010). · cites it 8× “Terminal disclaimers are expressly permitted under 35 U.S.C. § 253 : A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent.”
Perry W. Guinn, Gary N. Mills, Robert A. Bedient & Martin O. Greeley v. Henry B. Kopf, 96 F.3d 1419 (Fed. Cir. 1996). · cites it 11× “On October 13, 1994, Guinn attempted to terminate the interference by filing a statutory disclaimer under 35 U.S.C. § 253 of claim 9, the only claim of the ’812 patent corresponding to the single count of the interference, and a concurrent motion pursuant to 37 C.”
In re Ornum, 686 F.2d 937 (C.C.P.A. 1982). · cites it 4× “In prosecuting these “generic” claims in the application before us, appellants sought *939 to overcome the double patenting rejection by filing a terminal disclaimer under 35 U.S.C. § 253 , second paragraph. 1 The first disclaimer filed was criticized as not in proper form and a…”
Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291 (Fed. Cir. 2011). · cites it 2× “Disclaimers of patent claims are provided for under 35 U.S.C. § 253 , which provides in part that: A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of…”
Simpleair, Inc. v. Google LLC, 884 F.3d 1160 (Fed. Cir. 2018). “The terminal disclaimers require the child patents to expire on the same day as the '433 patent, see 35 U.S.C. § 253 (b), and also require the child patents to be "commonly owned with the application or patent which formed the basis" for the obviousness-type double patenting…”
In Re Robert J. Gartside & Richard C. Norton, 203 F.3d 1305 (Fed. Cir. 2000). “In that case, Guinn attempted to terminate the interference by disclaiming his one claim that corresponded to the count, see 35 U.S.C. § 253 (1994), and moving to dismiss for lack of jurisdiction on the basis of a lack of controversy.”
Nicholas v. Perricone, M.D. v. Medicis Pharm. Corp., Defendant-Cross, 432 F.3d 1368 (Fed. Cir. 2005). “See 35 U.S.C. § 253 (2000) (“[A]ny patentee .”
In Re Hubbell, 709 F.3d 1140 (Fed. Cir. 2013). · cites it 2× “This remedy draws on the 1952 codification that any patentee or applicant may “disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted,” 35 U.S.C. §253 . As explained by P.J. Federico, Examiner-in-Chief of the…”
Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2014). · cites it 2× “It explained that 35 U.S.C. § 253’s terminal disclaimer provision provided patent owners a remedy against a double patenting charge by “per- mit[ting] the patentee to cut back the term of a later issued patent so as to expire at the same time as the earlier issued patent.”
Rembrandt Wireless Tech., LP v. Samsung Elec. Co., 853 F.3d 1370 (Fed. Cir. 2017). “Eight days later, Rembrandt withdrew claim 40 from its infringement allegations and filed a statutory disclaimer pursuant to 35 U.S.C. § 253 (a) and 37 C.F.R. § 1.321 (a), disclaiming claim 40 in the U.”
Nobel Biocare Servs. Ag v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018). “Nobel subsequently filed a statutory disclaimer of claims 9 and 13-18 of the '977 patent under 35 U.S.C. § 253 (a). The Board instituted IPR of claims 1-5, 19, and 20 on the grounds of unpatentability under 35 U.”
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