Erroneous Revival by PTO is not a Cognizable Defense in an Infringement Action

Aristocrat Technologies Australia v. International Game Technologies (IGT) (Fed. Cir. 2008)

‘The district court concluded that the U.S. Patent and Trademark Office “improperly revived” U.S. Patent No. 7,056,215 after it was abandoned during prosecution, and therefore held it (and the continuation patent that followed it) invalid on summary judgment. We conclude that “improper revival” is not a cognizable defense in an action involving the validity or infringement of a patent. Thus, we reverse the district court’s grant of summary judgment and remand for proceedings consistent with this opinion.’

ATA missed its US national stage filing by one day. The PTO granted ATA’s petition to revive the application based on the applicant’s seemingly legitimate claim that the “entire delay” in filing the appropriate papers “was unintentional.” The district court, however, found the patent invalid based on the PTO’s “improper revival” of the application. In particular, the district court found that the PTO lacked authority to revive unintentionally late national stage applications.  Rather, according to the court, the PTO can only revive such applications when the cause of delay meets the much higher standard of being unavoidable. The Court found its statutory support from 35 USC 371, which requires the PTO to hold late national stage applications as abandoned unless “such failure to comply was unavoidable.”

On appeal, the Federal Circuit panel (Judges Newman, Bryson, and Linn) reversed – finding that “improper revival” is not a proper invalidity defense in a patent infringement action.

The court’s surprising conclusion is based on its interpretation of 35 U.S.C. §282. That statute lists the defenses available to charges of patent infringement. Those include:

(1) Noninfringement …,

(2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,

(3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title.

(4) Any other fact or act made a defense by this title.

Conditions for Patentability: In the appeal, the Federal Circuit saw the term “condition for patentability” of ¶2 above as a term of art and gave it a narrow interpretation: “While there are most certainly other factors that bear on the validity or the enforceability of a patent, utility and eligibility, novelty, and nonobviousness are the only so-called conditions for patentability.” Thus, complying with the timing requirements is not a condition of patentability.

Made a Defense: Taking a similarly hard stand, the appellate panel found that ¶4 above would only apply when another act had explicitly been ‘made a defense’ by the words of the patent act.

“Congress made it clear in various provisions of the statute when it intended to create a defense of invalidity or noninfringement, but indicated no such intention in the statutes pertaining to revival of abandoned applications. For example, 35 U.S.C. § 273 is entitled “Defense to infringement based on earliest inventor” and expressly provides that the provision “shall be a defense to an action for infringement.”…

Because the proper revival of an abandoned application is neither a fact or act made a defense by title 35 nor a ground specified in part II of title 35 as a condition for patentability, we hold that improper revival may not be asserted as a defense in an action involving the validity or infringement of a patent.”

On several occasions, the court has allowed an invalidity finding when the cause of invalidity did not reach one of the Section 282 categories. In the 1995 Quantum case, for instance, the court invalidated a patent based on improperly expanding its scope during prosecution. Here, the court pushed Quantum aside finding it irrelevant or “inapposite.” On the policy side, the court noted that this case is a one-off and is unlikely to encourage bad applicant behavior.

What result: The result of this case is that an accused infringer has no recourse to invalidate a patent that was issued as a result of procedural lapses during prosecution. Absent proof of inequitable conduct, there may be no recourse at all. In this respect, the Federal Circuit quoted its own 1997 Magnivision decision:

“Procedural lapses during examination, should they occur, do not provide grounds of invalidity. Absent proof of inequitable conduct, the examiner’s or the applicant’s absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued.”

Notes:

60 thoughts on “Erroneous Revival by PTO is not a Cognizable Defense in an Infringement Action

  1. Well, aside from people saying that an unintentional delay can now meet the unavoidable standard, the fact that it is a “one-off” case will give discretion in the future enough to possibly render this opinion meaningless. Seems that the detrimental effect of this decision will either be seen or alleviated depending on the cases that follow.

  2. Since improper revival is not cognizable as a 282 defense, can the PTO correct an improper revival after it has issued the patent?

  3. “Well, what about the other procedures that use similar “unintentional” vs. “unavoidable” criteria, such as failure to timely pay a maintenance fee. Or failure to timely file a response to an Office Action or some other paper. There’s two.”

    Sorry, those are both examples for which the defense would be “improper revival,” just like the present case. So much for the “vast array” of defenses that have been swept away…

    “Or how about the USPTO improperly accepting PCT applications when there are no US applicants?”

    That’s an interesting one. Have you ever seen a defense based on this? Are you sure that such a potential defense is swept away by the present decision?

  4. Well, what about the other procedures that use similar “unintentional” vs. “unavoidable” criteria, such as failure to timely pay a maintenance fee. Or failure to timely file a response to an Office Action or some other paper. There’s two.

    Or how about the USPTO improperly accepting PCT applications when there are no US applicants? I’ve seen that, too, although it was done deliberately, so I think there’s an excellent argument for inequitable conduct in there.

    In fact, I think many practitioners reading this blog can come up with a few.

  5. “A vast array of ‘defenses’ have been swept away with this tsunami-like decision but those in the prosecution business breath an understandable sigh of relief as do their clients.”

    That’s lovely rhetoric, but can you name 3 defenses that have been “swept away,” other than the now-defunct “improper revival” defense?

    Two?

  6. Let us hope that the other members of the bench will consider en banc the inconsistency of this opinion with Quantum, the elimination of an alleged infringer’s defenses, the eradication of a check or balance on the PTO’s ex parte procedure, and the remarkable long term impact and policy considerations (ripple effects) that this decision will have. A vast array of “defenses” have been swept away with this tsunami-like decision but those in the prosecution business breath an understandable sigh of relief as do their clients This will be an interesting challenge to witness for a Court that has been so maligned and overturned of late; especially one whose has so many judges that will be taking senior status in the near future.

  7. For me, understanding why the court did not follow Quantum was the most difficult part of the opinion.

    The opinion says that 35 USC 282 does allow adding other defenses and that it makes sense to disallow broadening claims in reexam (the issue in Quantum) by analogy with the prohibition against broadening in reissue. However, the courts are not compelled to add defenses and FC didn’t do so here for policy reasons. Probably because they don’t want to revisit and relitigate that stuff. While that may not sound convincing, the whole purpose for adding an unintentional revival process was to conserve litigation resources. Further, the court didn’t feel obligated to follow the few odd (wrongly decided IMO) district court cases cited.

    As for the APA part, Aristocrat’s brief contains a number of reasons why relief under APA was unavailing. One possible reason was that an action to invalidate should name the PTO as a party. That suggests that it would be possible to get relief by suing the Commish.

  8. patent leather

    “They should have held that to broaden claims in a reexamination is inequitable conduct by knowing (or should have known) that the patent owner was improperly broadening claims.”

    This argument can be used for any claim which does not meet any statutory provision, e.g., 102, 103, 112.

  9. “The opinion authored by Judge Linn, a former patent prosecutor from Foley, offers the following: “Consistent with our obligation to give meaning to all of the words in the statute, . . ., we decline to read the [Section 4 of 282] statute in this manner and therefore require that the asserted defense actually be ‘made a defense.’” And yet a page or two later, this same opinion concedes that Quantum (impermissibly broadening reexam) is not within 282 but is still viable.

    This logic lacks integrity.”

    The Aristocrat opinion’s analysis of the statute is clear and logical. You can’t argue with the wording of the statute. If you still don’t agree, read the opinion again and look at the statutes carefully.

    The real problem here is Quantum. Quantum must have been wrongly decided. The court in Quantum should have reached the same result but in a different manner. They should have held that to broaden claims in a reexamination is inequitable conduct by knowing (or should have known) that the patent owner was improperly broadening claims.

  10. “The procedural lapse that’s really at issue here was the PTO’s, not the patentees.
    Posted by: BigGuy | Sep 24, 2008 at 06:43 AM

    This is incorrect. The PTO didn’t screw up by granting the petition; the patentee screwed up by not filing ONE DAY earlier.”

    I didn’t suggest that the patentee was blameless. But the legal issue in the case was whether the PTO’s alleged failure to follow the law provided a defense to infringement. No one disputes that the PTO has authority to revive under certain circumstances. So yes, the defendant claimed that the PTO screwed up by granting the petition. This alleged “improper revival” was the “procedural lapse” that the United States Court of Appeals for the Federal Circuit is talking about.

  11. Is there a circumstance where the PTO can improperly revive an application that does not also involve inequitable conduct on the part of the applicant (which would of course provide its own defense)? IGT argued that any revival of an application on the grounds of “unintentional abandonment” is statutorily unsupported and thus improper, a question the Fed Circuit explicitly declined to answer (though I certainly hope they would decide that such revivals are proper!). Assuming that “bona fide” unintentional abandonment revivals are proper in general, an allegation that a particular revival in a particular case is improper may generally boil down to a charge of inequitable conduct.

    The only scenario to the contrary I can think of is where the applicant files an unintentional abandonment petition for revival erroneously believing the abandonment was unintentional (i.e., misunderstanding the requirements for unintentional abandonment). In such a case, any revival is improper, while there is arguably no inequitable conduct because there is no intent to deceive or intentional misrepresentation (i.e., only a mistake of law).

  12. Of course, the “backdoor” way to challenge revival that should work under the Fed Circuit’s decision is to assert invalidity based on some intervening art (i.e., art with a date between the PCT filing and the allegedly late national phase entry application). In this way, the infringer would force the court to review the revival because, if the revival was improper, the “national phase entry application” would in reality be a regular US national filing with no right of priority and the cited art would invalidate the patent under one of the “conditions for patentability” listed in the decision (i.e., 102 or 103).

    Thus improper revival is not technically the defense and maybe the practical effect of the Aristocrat decision is not that great.

  13. …the “defense” as one of noninfringement under 282(1) due to intervening rights from the lapse….
    Posted by: JeffSM | Sep 23, 2008 at 04:31 PM

    I doubt it; intervening rights typically arise after a longer period, like six months, not one day.

    ———————

    The procedural lapse that’s really at issue here was the PTO’s, not the patentees.
    Posted by: BigGuy | Sep 24, 2008 at 06:43 AM

    This is incorrect. The PTO didn’t screw up by granting the petition; the patentee screwed up by not filing ONE DAY earlier.

  14. “In claim construction, we are laser-focused on the filewrapper for every nuance and yet procedurally, we are now guided to ignore ‘irregularities.’ … Perhaps we shold ignore small entity status, missed maintenance fees, unchecked IDSs, and “missing” drawings from an original application.”

    Perhaps we’re getting a little carried away? The procedural lapse that’s really at issue here was the PTO’s, not the patentees. When you mess up it’s called “malpractice”, not a procedural lapse. But that’s as it should be.

  15. “Once a patent has issued, the procedural minutiae of prosecution have little relevance to the metes and bounds of the patentee’s right to exclude. If any prosecution irregularity or procedural lapse, however minor, became grist for a later assertion of invalidity, accused infringers would inundate the courts with arguments relating to every minor transgression they could comb from the file wrapper”

    Good lord. Is it possible this bizarre dicta is just a classic example of that good old, ultra-dry judicial humor? As in “ha ha, relish the irony”?

  16. “Once a patent has issued, the procedural minutiae of prosecution have little relevance to the metes and bounds of the patentee’s right to exclude. If any prosecution irregularity or procedural lapse, however minor, became grist for a later assertion of invalidity, accused infringers would inundate the courts with arguments relating to every minor transgression they could comb from the file wrapper”

    Good lord. Is it possible this bizarre dicta is just a classic example of that good old, ultra-dry judicial humor? As in “ha ha, relish the irony”?

  17. Here’s a statistical question that Dennis has probably already addressed: how many petitions to revive have been filed each year for the past fifteen years and what percentage of them were granted in each of those years?

  18. The opinion authored by Judge Linn, a former patent prosecutor from Foley, offers the following: “Consistent with our obligation to give meaning to all of the words in the statute, . . ., we decline to read the [Section 4 of 282] statute in this manner and therefore require that the asserted defense actually be ‘made a defense.’” And yet a page or two later, this same opinion concedes that Quantum (impermissibly broadening reexam) is not within 282 but is still viable.

    This logic lacks integrity.

    In claim construction, we are laser-focused on the filewrapper for every nuance and yet procedurally, we are now guided to ignore “irregularities.” The opinion puts it kindly: “There is good reason not to permit procedural irregularities during prosecution, such as the one at issue here, to provide a basis for invalidity. Once a patent has issued, the procedural minutiae of prosecution have little relevance to the metes and bounds of the patentee’s right to exclude. If any prosecution irregularity or procedural lapse, however minor, became grist for a later assertion of invalidity, accused infringers would inundate the courts with arguments relating to every minor transgression they could comb from the file wrapper.”

    Perhaps we shold ignore small entity status, missed maintenance fees, unchecked IDSs, and “missing” drawings from an original application.

    The problem is that this one at issue is not procedural minutiae. It is statutorily barred and yet an accused infringer can now do nothing except try to find some intent, after it gets past privilege. The statutes are being ignored and this opinion should make the prosecutors happy — for now. Then they can get back to their procedural minutiae, comfortable with the knowledge that their mistakes will not create a defense of invalidity.

  19. “not a cognizable defense” – come on you nerdy patent rejects… “not a defense” would have been sufficient, but the language HAD to say cognizable defense…

    I think its understood that all defenses are cognizable or they would not be named defense. Perhaps the drafter of that opinion is the same person to puts in all negatives in the MPEP simply to confuse outsiders and add a level of legitimacy to patent law that it does not deserve (non-statutory, non-obvious, but novel, etc).

  20. “Does this fall under 282(4), “Any other fact or act made a defense by this title”? I don’t know, but I would think that the courts would consider that knowingly having incorrect inventors and not correcting them under 35 U.S.C. 256 is inequitable conduct (even in an issued patent), and thus, improper inventorship still is a defense. But what do I know…”

    I think the answer is no, it does not fall under 282(4). But inequitable conduct is not a legal defense that arises under the Patent Act. It’s an equitable defense. (It doesn’t justify the accused conduct, it excuses it.) Thus, inequitable conduct should still be a defense.

    That said, I’m not sure that improper inventorship should always be an equitable defense, especially if it has no impact on ownership. Only rarely would inventorship be material to patentability. But maybe I’m missing something?

  21. I wonder if it would have mattered if the defendant had presented and the DCt accepted the “defense” as one of noninfringement under 282(1) due to intervening rights from the lapse. I agree that this is bad law.

  22. Mark, that is an interesting question.

    35 U.S.C. 256 states, “Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

    The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.”

    Does this fall under 282(4), “Any other fact or act made a defense by this title”? I don’t know, but I would think that the courts would consider that knowingly having incorrect inventors and not correcting them under 35 U.S.C. 256 is inequitable conduct (even in an issued patent), and thus, improper inventorship still is a defense. But what do I know…

  23. The CAFC dismissed the APA claim without explanation.
    Posted by: Federally Circuitous | Sep 23, 2008 at 02:57 AM

    I think the paragraph above the dismissal paragraph explains why they dismissed “the APA claim.” It seems the CAFC considered the APA action to be integral to the improper revival defense. Thus, even assuming the district court got it right in finding the patent was improperly revived, that’s still not a defense to infringement. APA goes only to procedural defects, and the CAFC said procedural defects don’t go to invalidity.

  24. So is improver inventorship no longer a grounds for invalidity? It is nowhere identified as a defense, and it is in Part II.

  25. The CAFC seems to read the statute as “The following shall be the ONLY defenses…” I guess I need to get a new copy of 35 USC as my version is missing the word “only”. I hope IGT petitions for a rehearing en banc to overturn this ridiculous ruling.

  26. “The CAFC ignores the statutes…”

    Did you read the decision? Seems to me the court analyzed the statute quite closely.

  27. This seems to be the correct decision under 35 USC 282. Therefore, it is the role of equity to prevent the public from such patent-based monopolies that have been improperly and illegally granted. Hence, it seems that inequitable conduct is the proper defense (i.e., an equitable defense and not a statutory defense).

  28. This decision is disappointing. The CAFC ignores the statutes and prevents future litigants from holding patentholders to deadlines they ignored during prosecution.

    A trademark partner of mine once mentioned that you could fix anything in trademarks at the PTO by paying the fees.This is one more step for patents in that direction.

    Someone above mentioned that this is a results oriented decision. It absolutely is and that is a shame.

  29. The article states “35 USC 371, which requires the PTO to hold late national stage applications as abandoned unless “such failure to comply was unavoidable”

    My reading suggests that the above is not quite accurate. More specifically, 371 requires that an application be regarded as abandoned unless it can be shown to the satisfaction of the Director that the delay was unavoidable.

    Last time I checked, such language commits the determination to the discretion of the Director, which resulted in overcoming the missed date. I don’t think this case poses anything revolutionary requiring a deep dive into the APA. But that’s just me.

  30. IMHO, this is not just a run-of-the-mill “narrowly missed filing date.” Not all dates are equal.

    I will qualify my earlier comment by excluding missed priority dates from that which can be cured in equity. This case involved abandonment where significant rights have already vested, which should rightly be viewed differently from something like a missed priority date where no rights have vested.

  31. The CAFC dismissed the APA claim without explanation. But I don’t think this situation is a one-off, I’ve seen enough narrowly-missed filing dates in my time. So if I come across a similarly procured patent that I think may be asserted against me, what’s to stop me from trying to get DJ of invalidity on APA grounds? Does Medimmune get me over the hurdle of DJ jurisdiction in an APA action to invalidate a patent? If the district court’s decision is appealed, it may force the CAFC to articulate the reason the APA doesn’t apply here, but I need to get in the door first.

  32. Josh, you may want to chill out. Its seems as if the CAFC is only saying that a patent will not be invalidated due to a simple procedural lapse. Such a ruling is quite in line with principles of equity upon which the patent system is based, which state, inter alia, that valuable rights will not be forfeited based on curable procedural and formal defects. No less than the SCOTUS has said that “well-established principles of equity apply with equal force to disputes arising under the Patent Act.”

    “Bill Brasky once punched a hole in a cow just to see who was coming up the road.”

  33. WOW! WOW! Here’s the elephant in the room:
    “For example, section 112 unquestionably provides certain additional requirements for a patent to be valid, one of which, for instance, is that the patented invention be enabled by the specification. 35 U.S.C. § 112, ¶ 1. But the requirements in section 112 are not conditions for patentability; they are merely requirements for obtaining a valid patent.”

    The CAFC has really gone haywire. No more 112 invalidity defense. This is just superb!

  34. ” I would think that the CAFC would have found one way or another to rule for Aristocrat on this one.”

    That’s the heart of the CAFC problem: result oriented decisions.

    patent lawyers and patent holders would like some judicial clarity and consistency for a change.

    Didn’t realize Newman is on the panel. Sad. She’s getting of age.

  35. I don’t know what’s with the negative comments above, since most readers of this blog are patent attorneys and patent owners. I would bet that the negative posters above are actually the IGT lawyers! Sorry guys. I would think that the CAFC would have found one way or another to rule for Aristocrat on this one.

  36. EG:

    The problem here that the case is incosistent with Quantum. The court’s distinguishment over Quantum is pure Gobbledygook nonesense: “…we discern no legitimate incentive for a patent applicant to intentionally abandon its application, much less to attempt to persuade the PTO to improperly revive it.”

    Also, why can’t the revival be challenged under the APA? The court’s short answer: “the APA provides no relief to IGT”. But provides no explanation.

    I can bet you that when this case goes for a petition for rehearing en banc, if denied, Newman will issue a scathing dissent.

  37. For all the “huffing and puffing” that has gone on about this decision, I frankly feel the Federal Circuit has interpreted 35 USC 282 correctly here in ruling that an alleged “improvident grant” of unintentional abandonment is not a proper validity defense. At least this panel bothered to read and interprete each part of 35 USC 282 (as it should) to be consistent, and may be some others who have opined here should read it as well. In fact, SCOTUS could benefit from looking at how this panel interpreted the statute and stop relying on “SCOTUS patent common law” (the reference in KSR International to the improbability of patentability in a combination of old elements is one such awful and nauseating example of SCOTUS spouting “SCOTUS patent common law” and ignoring the second part of 35 USC 103(a) that says that patentability shall not be negatived by the manner in which the invention was made).

  38. “Mooney, why do you owe me a coke?”

    Because I reiterated your comment (albeit less succinctly) without realizing you had already made it.

  39. A gobbledgook opinion and a cop-out by the CAFC. The question can no longer be presented on an appeal from DC, but I would say it is fair game in inter-partes reexam under the right circumstances.

  40. Josh said, “This case sets precedent for any future attacks based on improper revival.”

    This is not true. Nothing precludes an attack based on inequitable conduct, which would include filing a false statement that the delay from the date the response was due until the date that the petition was filed was unintentional.

    Mooney, why do you owe me a coke?

  41. So I guess the case we’re waiting for is one where the revival of an unintentionally abandoned application is refused by the PTO and the applicant appeals to the CAFC arguing that the PTO is actually applying an impermissible “unavoidable” standard. Otherwise, given the Federal Circuit’s holding here, I don’t see how the question ever gets presented.

  42. “I have recently had an application revived based after three years of abandonment. The PTO accepted a mere “statement” as the basis for revival. Happy to know that we’re off the hook forever.”

    Perhaps with respect to a claim that the PTO improperly revived it. Prosecution laches may still be an issue, however. Good luck!

  43. Random:

    I don’t know from where you’re coming from. This is not a case-specific decision. The court here held that revivals per se cannot be a basis for an invalidity defense. This case sets precedent for any future attacks based on improper revival. I have recently had an application revived based after three years of abandonment. The PTO accepted a mere “statement” as the basis for revival. Happy to know that we’re off the hook forever.

  44. “Where’s your beef?”

    I believe that would rest squarely in the concept of deadlines being DEADlines. Ridiculous. Now we have improperly issued patents floating around that are magically made proper. Quantum etc. are proof that the CAFC is just making an exception for these folks even though the law is clear about what constitutes a “defense”. I wonder if it has occured to them that there is no patent if it is invalid? It is very clear this application was allowed by the PTO in a situation where they lack even the authority to do so.

    Hopefully the DC finds the patent invalid one way or another. Maybe they’ll get as creative as the CAFC did.

  45. JAOI:

    This opinion does not turn on 1 day v. 10 years. It does not differ based on the underlying facts. Under this opinion, never ever is a DC allowed to review a revival regardless of what the alleged underlying facts are. Revivals “per se” cannot be used as a invalidity defense. And this court buttresses its holding by making the all-encompassing outrageous finding that applicants have no “incentive” to intentionally abandon.

  46. Dear Josh,

    To err is human, and to be human is unavoidable (at least for most of us). One day late is not comparable to ten years. Where’s your beef?

  47. This is a TERRIBLE result. And the comment:

    “On the policy side, the court noted that this case is a one-off and is unlikely to encourage bad applicant behavior.”

    Sorry, but I’ve actually SEEN quite a bit of bad behavior that is now insulated by this holding!

  48. This opinion is sickening for two reasons:

    1. The court acknowledges that the District Court found a seperate basis for review under the APA. However, the court never explains why the DC was wrong in that respect. It simply concludes: “Under the circumstances of this case, the APA provides no relief to IGT.” Why? Can’t they explain why? Why isn’t the APA a seperate basis for challenging the revival? Why? Why?

    2. The court makes the very remarkable finding: “we discern no legitimate incentive for a patent applcant to intentionally abandon its application, much less to attempt to persuade the PTO to improperly revive it.” Are these judges for real? No incentive for abandoning? Well, let’s say the applicatin doesn’t have any money. He abandons the application – then 10 years later when there are infringers he improperly revives the application. Is that “inventive” enough?

    I am just so sick with nausea after reading this opinion, that I will just have to go home to rest.

    Plainly pathetic.

  49. Fascinating opinion. The Aristocrat argument that some of us thought was a red herring was actually the winning argument after all!

    An interesting consequence of this is that there doesn’t seem to be any means now to challenge whether the PTO really has the authority to revive or not, unless the PTO changes its internal policy and stops unintentional revivals.

  50. “Did the PTO ever respond to this holding in an official or unofficial capacity? Has anybody seen their attempts to revive similar cases denied by the PTO based on an analysis similar to that by the District Court?”

    IIRC, the PTO claimed in their brief that they had authority to revive unintentionally abandoned applications.

    The PTO is still granting petitions to revive unintentionally abandonded 371 applications, as far as I know.

  51. So from the standpoint of an applicant who wants to revive their unintentionally abandoned PCT application, is there any difference between the CAFC saying that improper revival is not an invalidity defense and simply saying that the PTO has authority for such a revival?

    It seems that either conclusion would prevent an accused infringer from challenging, on the basis of the revival, a patent that issued from the application.

    Also, can anyone think of a situation that would cause the CAFC to consider whether the PTO has authority for such a revival?

  52. From Dennis’s earlier post: “Prediction: I expect that the CAFC will reverse — holding that the PTO does have statutory authority to revive these unintentionally abandoned applications (but not giving any deference to the PTO’s interpretation of the law).”

    I give you 1/3 credit. The Federal Circuit did a nice job of avoiding the really sticky question of PTO authority. From my first reading, it seems that the court’s approach is right on target.

  53. “the district court found that the PTO lacked authority to revive unintentionally late national stage applications. Rather, according to the court, the PTO can only revive such applications when the cause of delay meets the much higher standard of being unavoidable. The Court found its statutory support from 35 USC 371, which requires the PTO to hold late national stage applications as abandoned unless “such failure to comply was unavoidable.”

    Did the PTO ever respond to this holding in an official or unofficial capacity? Has anybody seen their attempts to revive similar cases denied by the PTO based on an analysis similar to that by the District Court?

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