Eye Scan

Disclaimer Before Institution May Not Thwart PGRs, PTAB Litigation Blog

Visit the PTAB Litigation Blog.

In Microsurgical Tech., Inc. v. Regents of the Univ. of Colorado, No. PGR2021-00026, Paper 12 (P.T.A.B. June 16, 2021), the Patent Trial and Appeal Board (“PTAB”) held that disclaimed claims should be considered for post-grant review (“PGR”) eligibility.  The PTAB had previously held that disclaiming claims is a legitimate tool for Patent Owners to avoid institution of a covered business method (“CBM”) review.  The PTAB explained in Microsurgical that the difference between these two decisions is due to different applicable statutory provisions.

Read the full article at

Jones Day publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request reprint permission for any of our publications, please use our “Contact Us” form, which can be found on our website at The mailing of this publication is not intended to create, and receipt of it does not constitute, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.