Appeal 2007-0393
Reexamination Control 90/006,786
Patent 6,497,843
1 the extent of his interest in such patent. Such disclaimer
2 shall be in writing and recorded in the Patent and
3 Trademark Office, and it shall thereafter be considered as
4 part of the original patent to the extent of the interest
5 possessed by the disclaimant and by those claiming under
6 him.
7 That section by its terms refers to disclaiming “any complete claim”
8 of a patent not to terminal disclaimers. Patentee also relies on the
9 second paragraph of § 253 which provides:
10 In like manner any patentee or applicant may disclaim or
11 dedicate to the public the entire term, or any terminal part
12 of the term, of the patent granted or to be granted.
13 Patentee relies on the “sectional interest” portion of the first paragraph
14 combined with the “[i]n like manner” portion of the second paragraph and
15 argues that “commonly owned” as used in 37 CFR § 1.321(c)(1) means “the
16 same owner or a subset” of the owners.
17 We do not agree. The common ownership provision of § 1.321(c) is
18 not a requirement of statute. The common ownership provision has been
19 held to be a valid exercise of the Director’s rule making authority in
20 administering the statutory provision. Van Ornum, 686 F.2d at 944-48, 214
21 USPQ at 767-70. As made clear by both the regulatory history of § 1.321
22 and the Van Ornum opinion, the requirement for common ownership
23 addresses the problem of multiple infringement suits based on separate
24 patents on patentably indistinct inventions. Interpreting common ownership
25 to include one of multiple owners would allow the exact situation that the
26 regulation was intended to avoid. Thus, for example, Lee as a joint owner
27 could bring a civil action for infringement based upon the 620 patent and
28 enter into a licensing agreement to settle the action. Zyon, could also bring
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