Disclaimer Made in IPR Not Binding In Same Proceeding

In the Philippine context, the question of whether a patentee may use disclaimers during post-grant proceedings at the IPOPHL to modify claim scope has arisen in several disputes. The Philippines provides mechanisms such as post-grant oppositions and cancellation proceedings under the IPOPHL rules, which serve as avenues for challenging the validity or scope of patents.

One illustrative scenario can be drawn from the case of CUPP Computing AS v. Trend Micro Inc., but here adapted to Philippine law. CUPP owned patents covering mobile security systems and faced challenges to their validity. The dispute centered on the meaning of a critical term: “security system processor.”

CUPP argued that the “security system processor” must be a remote or separate processor, distinct from the mobile device processor. This interpretation would have narrowed the claims and excluded prior art. However, CUPP only raised this disclaimer during the ongoing review, relying on prior prosecution statements to support its position.

The IPOPHL’s Bureau of Patents has consistently maintained that a disclaimer made during proceedings cannot override the plain meaning of the claims unless it is clearly and unambiguously supported by the patent specification or the prosecution history. To allow otherwise would effectively enable patentees to amend claims without following the statutory amendment procedure required under the Intellectual Property Code and IPOPHL rules.

Why IPOPHL Rejects Mid-Proceeding Disclaimers

The IPOPHL has emphasized that patentees cannot adjust claim scope simply by argument in a review or cancellation case. The correct way to amend is by filing a request for amendment during substantive examination, or through the prescribed amendment process even post-grant, subject to publication and opposition.

A relevant Philippine precedent is found in Godinez v. Director of Patents (G.R. No. L-24902, 1969), where the Supreme Court held that the interpretation of claims must be grounded in the patent document itself. Attempts to introduce limitations not clearly supported by the claims and specification were disallowed.

Similarly, in Smith Kline & French Laboratories v. Court of Appeals (G.R. No. 91107, 1990), the Court underscored that the public has a right to rely on the published claims, and patentees cannot later shift scope to avoid prior art.

Lessons for Philippine Patent Owners

1. Be precise during prosecution – Claim wording and disclaimers should be made clear at the application stage before the IPOPHL examiner.
2. Do not rely on late disclaimers – Mid-proceeding disclaimers in oppositions or cancellations carry little weight unless expressly supported by the patent record.
3. Use amendment procedures properly – If claims need to be narrowed, use the statutory amendment process (request for amendment or divisional filings), ensuring transparency to the public.
4. Expect strict scrutiny – IPOPHL, like other jurisdictions, aims to protect the integrity of its review and cancellation processes, ensuring patentees cannot circumvent established procedures.

✅ In short: Just as the U.S. Federal Circuit ruled against CUPP’s attempt to narrow claims by argument, the IPOPHL would also disallow such tactics. Philippine courts and IPOPHL practice stress that disclaimers must be clear, unambiguous, and consistent with the written record, not introduced as afterthoughts in post-grant disputes.

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