Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
IN RE APPLICATION OF HIROSHI TAKAO ET AL.
Serial No. 530,358
Attorney Docket No. MFP-2453SUMI
February 27,1990
*1 Filed: September 8, 1983
Cushman
Darby & Cushman
Eleventh Floor
1615 L Street, N.W.
Washington, D.C. 20036
James E. Denny
Deputy Assistant Commissioner for Patents
This is a decision on the
RENEWED PETITION UNDR 37 C.F.R. SECTION 1.316(b) FOR ACCEPTANCE OF LATE PAYMENT
OF AN ISSUE FEE, filed July 28, 1988.
The petition is GRANTED.
Background
The Patent and Trademark
Office (PTO) file of the captioned application shows that a Notice of Allowance
and Issue Fee Due containing the statements, "THE ISSUE FEE MUST BE PAID
WITHIN THREE MONTHS FROM THE MAILING DATE OF THIS NOTICE as indicated above.
The application shall otherwise be regarded as ABANDONED." was mailed to
counsel for petitioners on April 5, 1985. [FN1] The issue fee was due no later
than July 5, 1985.
On August 19, 1985, a Notice
of Abandonment was mailed to counsel for petitioners informing them that the
application was abandoned due to the "failure to pay the required issue
fee within the statutory period of three (3) months from the mailing date of
4-5-85 of the Notice of Allowance."
On October 9, 1986, there
was filed a PETITION UNDER 37 CFR 1.137(a) FOR REVIVAL OF ABANDONED
APPLICATION. In that paper, it was stated that a declaration of the supervisor
of the incoming mail and docketing department accompanying
the petition established "that the delay was unavoidable." The
abandonment came to our attention only recently when our newly activated
computer brought up the fact that we had received no reply to our January 16,
1985 amendment." See note 1. There was filed also an unexecuted copy of a
TERMINAL DISCLAIMER disclaiming "the terminal 16 months of the term of any
patent granted on the above-identified application or on any application which
is entitled to the benefit of the filing date of the application under 35 U.S.C.
120." [FN2]
On December 16, 1986, the
PTO dismissed the October 9, 1986 petition and asked for additional evidence.
The decision on petition contained the comment that the initial petition had
not been accompanied by an adequate showing of the cause of unavoidable delay.
The decision on petition indicated generally what type of information was
necessary to establish unavoidable delay. The format of the submitted terminal
disclaimer was found "not acceptable." Petitioners were informed that
a substituted terminal disclaimer was required and that the "period to be
disclaimed will be 19 months, if promptly filed." (Emphasis added.)
The decision on petition
also contained the following paragraph:
If reconsideration on
the merits of this petition is desired, an adequate showing of unavoidable
delay and an acceptable Terminal Disclaimer must be submitted promptly under a
cover letter entitled "Renewed Petition under 37 CFR 1.316(b)." No additional fee for
delayed payment is required. (Emphasis added.)
*2 On March 8, 1988, there was filed a RENEWED PETITION UNDER 37
C.F.R. 1.316(b) FOR REVIVAL OF ABANDONED APPLICATION AND ACCEPTANCE OF LATE
PAID ISSUE FEE and supporting documentation. [FN3] In the renewed petition,
counsel for petitioners traversed the need for a substitute terminal
disclaimer. After being told that the application serial number appearing on
the submitted document was in error, a new executed terminal disclaimer was
filed April 8, 1988 disclaiming 33 months from the term of any patent that may
issue from the application.
The renewed petition was
dismissed in a decision mailed April 25, 1988 and reading, in pertinent part,
On December 16, 1986
the Patent and Trademark Office dismissed a prior petition and asked for
additional evidence. That decision concluded by indicating that if
reconsideration was desired, the additional material requested had to be filed
promptly. The renewed petition was filed more than fourteen (14) months after
the previous decision. An adequate explanation for the apparent lack of
diligence is required. (Original emphasis.)
On July 28, 1988, there
was filed a RENEWED PETITION UNDER 37 C.F.R. SECTION 1.316(B) FOR REVIVAL OF
ABANDONED APPLICATION. Accompanying the second renewed petition was a
declaration of G. Lloyd Knight setting forth an explanation of why no petition seeking
reconsideration of the December 16, 1986 decision on petition had been filed
until March 8, 1988. Mr. Knight declared that he had been registered to
practice before the PTO since 1954 and "never had a single patent
application go abandoned for failure on [his] part to take some action in a
timely fashion." He declared also that, after his law firm became aware,
beginning in the summer of 1986, of the number of patent applications that had
unintentionally become abandoned, the firm decided to appoint one senior
partner to oversee and handle the efforts to secure revival of such
applications. He was that senior partner. Mr. Knight declared also that, in
some of the cases in which he filed a petition to revive, the PTO did not in
its decision, if adverse, on such a petition, require that any request for
reconsideration or renewed petition be submitted "promptly." Mr.
Knight further declared that his
impression from reading
this December 16, 1986 decision was the same as [ [his] impression from reading ... [the] previous decisions,
..., namely that the issue of whether or not the application would be revived
did not require the request for reconsideration or renewed petition to be filed
promptly and that the only penalty that might be imposed if the renewed
petition were not filed promptly would be a longer period of time for the
Terminal Disclaimer. Accordingly, [he] worked on the renewed petition in this
case, in the same manner as for the other cases [he] was working on, taking them up with the diligence and attention [he]
felt were appropriate under all the circumstances. These circumstances included
the importance of having one senior partner, namely, [himself], overseeing the
efforts of the firm to secure revival of these applications, and the possible
interrelation of the events giving rise to their abandonment. That imposed a
significant burden on [him], as evidenced by the number of petitions, renewed
petitions and declarations that [he] prepared and filed in 1987 and 1988.
*3 The declaration
of Mr. Knight also points out that he was Chairman of the Management Group of
the law firm during 1987, which required him to spend many hours daily dealing
with law firm matters. Mr. Knight also maintained a full prosecution docket
during the period, worked 10 to 12 hours a day during the week (2 to 4 hours on
each weekend day), and took little vacation during the period.
Analysis
The pertinent statutory
provision applicable to the issue presented by this petition is 35 U.S.C. 151,
and particularly the last paragraph thereof which reads as follows:
If any payment required
by this section is not timely made, but is submitted with the fee for delayed
payment and the delay in payment is shown to
have been unavoidable, it may be accepted by the Commissioner as though no
abandonment or lapse had ever occurred.
While the concept of unavoidable delay has been an integral part
of the patent law since it was first introduced in 1861, there is a dearth of
legislative history that might provide some guidance as to what was intended by
Congress in using the terms "unavoidable delay." The question of
whether an applicant's delay in prosecuting an application was unavoidable must
be decided on a case- by-case basis. Smith v. Mossinghoff, 213 USPQ 977 (D.C.
Cir. 1982).
The patent law requires
an applicant to prosecute a patent application with reasonable diligence. As
noted in Planing Machine Co. v. Keith, 101 U.S. 479 (1879):
The patent law favors
meritorious inventors by conditionally conferring upon them for a limited
period exclusive rights to their inventions. But it requires them to be
vigilant and active in complying with the statutory conditions. It is not
unmindful of possibly intervening rights of the public. ... all applications
must be completed and prepared for examination within two years after the
petition is filed, unless it is shown to the satisfaction of the Commissioner
that the delay was unavoidable. All this shows the intention of Congress to
require diligence in prosecuting the claims to an exclusive right.
The diligence required
pertains to the act(s) required of applicant to respond to any outstanding Office action or
requirement so that the PTO can take appropriate action in completing the
examination of the application. As noted by a leading scholar on patents: [FN4]
Every application
pending in the Patent Office is presumed to be awaiting some act, either on the
part of the Office or of the applicant, which will advance it to the next stage
of the proceedings;
The
"inaction" of the applicant is ... his failure to perform the act
devolving upon him in order to advance his case.
The concept of diligence in pursuing a patent is further embodied
in the provisions of 37 CFR 1.316(b) which require that a petition to accept
late payment of the issue fee be "promptly" filed after applicant is
notified or otherwise becomes aware of the abandonment. Once an application
goes abandoned, it is incumbent on applicant to act with diligence in providing
the response necessary to continue to process the application in the normal
course of examination. Unless and until the Commissioner accepts an applicant's
response as sufficient and complete to take further action in the application,
the application remains abandoned and the burden continues to rest with
applicant to exercise diligence.
*4 The delay in
making payment of the issue fee relates not only to the period of time from the
requirement to make payment to the actual receipt of payment, but also includes
the period of time which is required for applicant to file a petition to accept late payment of
the issue fee that can be accepted by the Commissioner as showing that the
delay in payment was unavoidable. It is only after the receipt of the issue fee
and a showing that the delay was unavoidable that the Commissioner would take
further action in the normal processing of the application to a patent grant.
Hence, the showing of unavoidable delay must embrace the period from the time
the action by the Office requiring a response by applicant to the time both the
response and a showing of unavoidable delay acceptable to the Commissioner is
filed. Ex Parte Naef, 1905 Dec. Comm'r Pats. 121 (Comm'r 1905). In Ex Parte
Ruthenburg, 1906 Dec. Comm'r Pats. 90 (Comm'r 1905) Commissioner Allen
remarked:
It is noted that the
delay of one year after the notice to the applicant after the case was
abandoned does not place him in an equitable position to demand any leniency in
considering the question whether or not he has complied with the rule requiring
diligent and proper prosecution of a case.
At the time of the Ruthenburg decision, the statutory period for
responding to an Office action was one year. Commissioner Allen used this one-year
period after notice as a benchmark for evaluating diligence. See also Ex Parte
Hanson, 20 Gour 71:21 wherein a delay of more than a year in filing a petition
to revive was held to be excessive, resulting in a denial of the petition to
revive. Finally, the decision reported in Rosenberg and Parker-Kalon
Corporation v. Carr Fastener Company, 10 USPQ 106, 108 (2d Cir. 1931) illustrates a situation where the petition to
revive an abandoned application was denied because the showing did not
establish that the delay between the first and subsequent petition to revive of
25 months was unavoidable.
The test which is most
often applied in determining whether the delay of an attorney in seeking to
revive an application from its abandoned status has been unavoidable within the
meaning of the patent statutes is whether the attorney has used such care and
diligence as a prudent and careful person would have used under the
circumstances. Ex Parte Pratt, 1887 Dec. Comm'r Pats. 31 (Comm'r 1887); In re
Mattullath, 38 App. D.C. 497 (D.D.C. 1912). The notice to pay the issue fee in
this application was mailed April 5, 1985. The issue fee was paid on October 9,
1986, and the most recent attempt to demonstrate that the delay in payment was
unavoidable was filed on July 28, 1988. Petitioner cites a heavy workload by
the attorney handling the petition in the present application as being a factor
in causing the delay. The attorney's preoccupation with other matters that took
precedence over responding to the dismissal of the petition mailed December 16,
1986 in this case does not justify a lack of diligence in filing the renewed
petition until March 8, 1986. Smith v. Diamond, 209 USPQ 1091 (D.D.C. 1981).
*5 The lack of
diligence demonstrated by the attorney in charge of the petition to revive
appears to have been a conscious decision on his part based on the belief that
any delay after paying the issue fee could be cured by filing a terminal disclaimer equivalent to
the period of abandonment of this application. While the Office does have a
policy of requiring a terminal disclaimer in those situations where there has
been a delay of more than six months in filing a petition to revive an
application that has become abandoned [[37 CFR 1.316(d)], the terminal
disclaimer has never been authorized or set forth in the rules as a substitute
for a showing of unavoidable delay. Indeed, such an interpretation and a delay
of more than 14 months in filing the renewed petition are contrary to the
traditional concept of reasonable diligence, are contrary to the explicit
requirement of 37 CFR 1.316(b) that a petition to accept late payment be filed
promptly, and are contrary to the explicit notice in the decision of December
16, 1986, that the renewed petition be filed promptly.
Petitioners also provide
copies of numerous petition decisions which fail to require that the renewed
petition be filed promptly. None of the decisions cited either include a
requirement for a prompt response or relate to petitions under 37 CFR 1.137(a)
or 1.316(b). Rather, the decisions address requests to withdraw the holding of
abandonment or with petitions to revive for unintentional abandonment under 37
CFR 1.137(b). These latter petitions are not subject to the specific
requirement that they be "promptly" filed.
The offer to file a
terminal disclaimer in this application to reduce the term of the patent
because there was a delay in filing a petition to reinstate does not serve to obviate the potential harm
that can be caused by delay in the issuance of a patent. A patent issuing with
a shortened term may still issue at a time when a full industry has built up
and flourished without any blocking patents to be taken into account. In
Application of Herring, 17 F.2d 683 (D.C. Cir. 1927), the court, after affirming
the decision of the Commissioner not to revive an abandoned patent application,
remarked:
When this applicant
permitted his application to become abandoned, other inventors were engaged in
the development of this art, and it is common knowledge, as pointed out by the
Commissioner, that within a comparatively short time their efforts were crowned
with success. In these circumstances, prompt action was demanded of this
applicant. To permit him now, after his long and inexcusable delay, to revive
his abandoned application, might result in very serious injustice to those
inventors who perservered to the goal of success.
This is not to say that the situation in this case is identical to
the facts in Herring. There comes a time, however, when the objectives of the
patent system are not achieved by an apparent disregard for the need to take
action in a reasonable period of time. Herring illustrates the need to preserve
the policies that encourage diligent behavior.
*6 While the above
analysis is considered to be a correct analysis of the letter and intent of the
law on unavoidable delay, the Patent and Trademark Office has not acted in a way in the past
that necessarily would be characterized as consistent with this analysis. Thus,
the terminal disclaimer practice that petitioner has relied upon appears to
have been announced in a notice [FN5] published in January 1972, the substance
of which has been incorporated in M.P.E.P. 203.08, that linked the concept of
diligence with the filing of a terminal disclaimer as follows:
In an effort to sharply
reduce the volume and need for status inquiries, the past policy that diligence
must be established by making timely status requests in connection with
petitions to revive is hereby discontinued.
When an application has
been abandoned for an excessive period before the filing of a petition to
revive, an appropriate terminal disclaimer may be required.
Likewise, in amending the
rules related to petitions to revive an abandoned application or accept late payment
of an issue fee in 1982, the PTO again linked the concepts of a prompt
(diligent) filing of a petition with the filing of a terminal disclaimer as
follows: [FN6]
Paragraph (c) requires
that any petition for revival under paragraphs (a) or (b) of § 1.137 be promptly filed and that a terminal
disclaimer, equivalent to the period of abandonment of the application, be
filed with any petition filed more than six months after the date of
abandonment.
Paragraph (d) [of
Section 1.316] is added to require a terminal disclaimer
equivalent to the period of abandonment of the application where any petition
under this section is not filed within six months of the date of abandonment.
While it was not the intent of the PTO to permit a petitioner to
cure a lack of diligence in providing all the necessary requirements to accept
late payment of an issue fee, as suggested by petitioner in the instant case,
such an understanding is not unreasonable in light of past actions by the PTO
and the absence of clear guidance on this issue.
Petitioner has adequately
explained the reasons that the issue fee was not paid within the time period
set in the Notice mailed April 5, 1985, and has forthrightly provided a
detailed explanation of the activity and motivations that guided the activity
that was undertaken to request the Commissioner to accept late payment of the
issue fee. Under the circumstances of this case, the delays in payment of the
issue fee and in providing the information necessary to accept late payment [based,
in part, on petitioner's reasonable misunderstanding of the policy and practice
of the PTO] are considered unavoidable within the meaning of 35 U.S.C. § 151. In re Decision Dated February 18, 1969,
161 USPQ 383 (Ass't Comm'r. 1969). In the future, a practitioner's diligence in
seeking to revive an abandoned application or accept a late payment of an issue
fee will be considered in determining whether any delay was unavoidable. A
terminal disclaimer will not be accepted as a substitute
for diligent conduct.
Decision
*7 Based on the
facts presented in this record and for all the reasons discussed above, it is
concluded that the delay in payment of the issue fee in this application was
unavoidable within the meaning of 35 U.S.C. 151. Accordingly, the petition to
accept late payment of the issue fee is GRANTED.
FN1. The Notice of Allowance and Issue Fee Due was mailed after
PTO review of an amendment filed January 16, 1985 and after a March 27, 1985
telephone conversation between the patent examiner and an attorney for
petitioners regarding minor claim changes that would be made by an examiner's
amendment to place the application in condition for allowance.
FN2. The executed TERMINAL DISCLAIMER was filed November 4, 1986;
the application Serial No. was incorrect in both the executed and unexecuted
versions. The TERMINAL DISCLAIMER was filed because 37 C.F.R. § 1.316(d) requires, in those instances where
a petition to accept late payment of an issue fee is filed after six months of
the date of abandonment, the filing of a terminal disclaimer "dedicating
to the public a terminal part of the term of any
patent granted thereon equivalent to the period of abandonment of the
application."
FN3. The renewed petition was filed almost fifteen months after
the mailing of the December 16, 1986 decision on petition.
FN4. Robinson, Treatise on the Law of Patents, § 576 (1890).
FN5. 893 Off. Gaz. Pat. Off. 810 (January 1972).
FN6. 1021 Off. Gaz. Pat. Off. 32 (August 10, 1982).
17 U.S.P.Q.2d 1155
END OF DOCUMENT