Question 8
Domain 3: Patent Prosecution and MPEP-Based PracticeWhat is the effect of filing a statutory disclaimer under 35 U.S.C. § 253?
Correct answer: B
Explanation
Under 35 U.S.C. § 253, a statutory disclaimer lets the patentee "disclaim any complete claim" of the patent. Once filed, the disclaimed claim is treated as though it had never been part of the patent, so it has no legal effect going forward.
Why each option is right or wrong
A. It adds new claims to the patent
B. It disclaims one or more complete claims of the patent, as if the claims never existed
35 U.S.C. § 253(a) permits a patentee to file a written disclaimer of any complete claim, and the statute provides that the disclaimed claim is thereafter considered part of the original patent only to the extent it is treated as surrendered. The legal effect is retroactive as to that claim: it is regarded as though it had never been included in the patent, leaving the remaining claims intact and enforceable.
C. It extends the patent term
D. It transfers patent ownership