The "Hakim Statement" – Avoiding Estoppel During Prosecution

Parallel, pisional, or continuation applications can be strategically filed to pursue additional or broader claims. Yet, claim scope across related applications can be constrained by the judicially created doctrine of file-wrapper estoppel (also referred to as prosecution history estoppel).

The doctrine is rooted in equitable principles of fair notice and public reliance on official records. It is intended to limit a patent owner from recapturing subject matter that has been clearly and unmistakably surrendered during prosecution of a patent application.¹ The presumption is that an applicant who narrows claim scope to overcome prior-art rejections (e.g., by way of an amendment) cannot later reclaim the surrendered territory. To rebut the presumption, an applicant must create a prosecution record that is "sufficiently clear" to notify the Patent Office (USPTO) that prior disclaimers are being rescinded and that the previously excluded scope is at issue.²