No Revival For “Unintentional” Missed National Stage Filing Date (Delay Must Be Unavoidable)

Aristocrat Technologies Australia (ATA) v. International Gaming Technologies (IGT) (N.D.Cal. 2007).

ATA originally filed an Australian provisional patent application on July 8, 1997.  Exactly one year later (on July 8, 1998) ATA filed its international PCT Application. In the US, a PCT applicant can wait 30 months to file its national stage application. ATA was actually given an extra two-days because the 30–month deadline of January 8, 2000 fell on a weekend. 

Unfortunately, the January 10, 2000 deadline came and went — The PTO did not receive the national stage conversion until the next day January 11, 2000. By that time, however, the application had been abandoned.

Unable to Correct Filing Date without Proof of Mailing or PTO Receipt: ATA first asked the PTO to “correct” the filing date. This failed when ATA was unable to submit an express mail receipt or other direct proof of submission. The applicant did submit a certificate of mailing, a fee payment check, and a letter from the patent attorney that all indicated a January 10 filing date — these, however, did not pass muster with the PTO.

Revival for Missed National Stage: ATA was then able to revive the application by showing that the “entire delay” in filing the appropriate papers “was unintentional.” 

During litigation, IGT challenged the PTO’s unintentional revival standard. In particular, 35 USC 371, which defines abandonment for failure to comply with national stage requirements, only allows for revival when a failure was “unavoidable.”

Failure to comply with these requirements shall be regarded as abandonment of the application by the parties thereof, unless it be shown to the satisfaction of the Director that such failure to comply was unavoidable. 35 USC 371.

The “unavoidable” standard is much higher than that for “unintentional” abandonment. And clearly, the applicant did not show that the delay was unavoidable.

Summary Judgment of Invalidity

For the foregoing reasons, the Court GRANTS Defendant’s Motion for Summary Judgment and finds that Defendants have shown, by clear and convincing evidence, that both patents in suit are invalid because the ‘215 Application was abandoned, and not lawfully revived.

Notes:

  • This case has implications for Sections 371, 133 and 151.
  • Statutory provisions for revival due to unintentional abandonment:
    • 35 USC 111: Failure to submit fee and oath of a patent application;
    • 35 USC 41: Fee schedule for revival of unintentionally abandoned applications. This section provides a specific fee for revival of unintentionally abandoned applications as an explicit alternative to revival of unavoidably abandoned applications; and
    • 35 USC 122: Abandonment due to failure to rescind nonpublication request.
  • Statutory provisions that only refer to revival due to unavoidable abandonment:
    • 35 USC 133: Abandonment due to failure to respond to PTO notice (Normally a 6–month deadline, but may be less);
    • 35 USC 151: Revival for failure to pay issue fee; and
    • 35 USC 371: Failure to comply with national stage filing requirements.
  • PTO Rules:
    • 37 C.F.R. 1.137(b) provide for revival of applications based on an applicant’s unintentional delay in replying. Under the rule, abandoned applications, reexamination prosecution terminated under §§ 1.550(d) or 1.957(b) or limited under § 1.957(c), or lapsed patents may all be revived under this standard.  The PTO rules are, however, subordinate to statutes.
  • Caselaw:
    • Lumenyte v. Cable Lite (Fed. Cir. 1996): Patentee had revived case as unintentionally abandoned. The CAFC affirmed the ruling without questioning whether such revival is ever permissible.
    • Morganroth v. Quigg (Fed. Cir. 1989): Affirming that the Director does not have authority to revive an unintentionally abandoned patent application “that resulted from the applicant’s failure to appeal from a final district court judgment that upheld the Commissioner’s prior refusal to issue a patent.”
    • New York Univ. v. Autodesk, Inc., 2007 U.S. Dist. LEXIS 50832 (SDNY 2007): The court found that the delay in reviving was not even unintentional. The court explicitly did not reach the question of whether revival for unintentional abandonment due to failure to respond to an office action is even permitted. (Remember, 35 USC 133 only allows for revival of unavoidably abandoned applications.)
    • Field Hybrids v. Toyota (D.Minn 2005).
  • Admin Law: There are a number additional admin-law issues in the case for those interested.
  • Tech-Law-Forum discussess the case [LINK]
  • Read the case [LINK]

33 thoughts on “No Revival For “Unintentional” Missed National Stage Filing Date (Delay Must Be Unavoidable)

  1. 33

    Final judgment entered September 4.

    Notice of Appeal filed September 12.

    Hopefully patentee’s appeal brief stresses many of the points above.

  2. 32

    It appears that final judgment has not yet been entered for the appeal clock to start – the parties filed a joint motion with competing proposed judgment forms

  3. 31

    The only unavoidable petition I’ve successfully filed was for a case where an address update was sent in, but the address was not changed by the PTO & the mail was not properly forwarded so we were not aware of the action until after the deadline.

    Does anyone know if the plaintiff has appealed this case?

  4. 30

    > A couple thoughts. First, “unavoidable” is a strange
    > term. Is it akin to “zero tolerance”? Is waiting to
    > the last minute to file and then missing the deadline
    > because the car ran out of gas on the way to the post
    > office or because the PTO’s efiling system failed
    >”unavoidable”?

    According to the PTO, the answer is “no”. We had a talk at our local Patent Law Association when these rules first went into effect, and the head of the petitions office said that waiting until the last minute and missing the date wasn’t “unavoidable” under nearly any circumstances, since you could have avoided it by filing earlier.

    The only time I’ve ever filed under “unavoidable” and succeeded is when the inventor died before the office action was sent, and there wasn’t any executor or administrator appointed who was authorized to take action on behalf of the estate until well after the deadline.

  5. 29

    “The requirement with respect to the national fee referred to in subsection (c)(1), the translation referred to in subsection (c)(2), and the oath or declaration
    referred to in subsection (c)(4) of this section shall be complied with by the date of the commencement of the national stage or by such later time as may be fixed by the Director.”

    Is this consistent with the PCT and WIPO (see above)? We might need to change the law if this is the court’s interpretation.

  6. 28

    The time limits in section 371 refer to delay in accepting the requirements for the national stage application. 371 also states, “The requirement with respect to the national fee referred to in subsection (c)(1), the translation referred to in subsection (c)(2), and the oath or declaration
    referred to in subsection (c)(4) of this section shall be complied with by the date of the commencement of the national stage or by such later time as may be fixed by the Director.” An argument could be made (although I admit it would probably lose) that by granting these unintentional petitions, the Director has established this later time. This may not help ATA but it could help someone who failed to provide a translation or a fee by the deadline.

  7. 27

    Ken, reviving the “national phase application” is the same thing as “reviving the PCT application” – they are the same application for purposes of the national stage and US patent law.

  8. 26

    Joe – the US application IS the PCT application. It is not a new or different application. In fact, 35 USC 371 states that the national stage automatically commences at the end of the applicable time limit (i.e., the 30-month date), but if you don’t file your national stage materials before the end of the applicable time limit (30-month date), your application goes abandoned. Therefore, 35 USC 41(a)(7) should be available to revive your unintentionally abandoned application the same as any other abandoned US patent application – and I believe that the USPTO has accepted such petitions for late entry into the national stage for years.

  9. 25

    As an alternative to using 35 U.S.C. 371, 35 U.S.C. 41 could have been used to revive the PCT application as, pursuant to 35 U.S.C. 363, an international application designating the U.S. shall have the same effect … of a national application for patenr regularly filed in the PTO. Thus, rather than reviving the national phase application, he could have revived the PCT application under section 41 and then refiled the national stage application based on the revived PCT application.

  10. 24

    I checked the IFW history of 7,056,215. The USPTO stamped the receipt date of the application as being 1/11/2000, which means that it MUST have been deposited with the USPS on 1/10/2000 (they don’t deliver on the same day). Perhaps in the attorney’s initial petition to correct the filing date he should have made this argument with an affidavit signed by a USPS employee that it is impossible for an express mail to be delivered the same day, perhaps this would be sufficient proof under 37 CFR 1.10(d)(3). What probably happened is the USPS employee didn’t write in the date in on the label (once I filed something express mail and the postal worker didn’t write in the “in date” on the label, and I told her she must write it in. She thought I was nuts).

    But I don’t disagree with the court’s decision. The remedy for the US application isn’t a revival because it was never co-pending with the PCT in the first place (because of the Jan 11 filing date).

    The attorney should have appealed the rejection of his initial petition to the Board, or filed a petition to suspend the rules. But of course, hindsight is 20/20.

  11. 23

    Actually, other sections of 5 USC 706(2) would also apply – e.g., (2)(c) – “in excess of statutory jurisdiction, authority, or limitations, or short of statutory right.”

    There are limits on the use of this statute (e.g., you still have to establish standing in order to challenge a patent as having been improperly issued, etc.)

  12. 22

    It’s 5 USC 706(2)(A) – allows a court to review agency decisions. A court must “hold unlawful and set aside agency action, findings, and conclusions found to be– (A) arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.”

  13. 21

    David French’s continued posting:

    “(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.

    Subsection (2) appears to be restricted to 35 USC 100-105, Chapter 10, “Patentability of Inventions”. Subsection (3) is specific to disclosure requirements, section 112, and reissue requirements section 251.

    I do not know what subsection (4) refers to. Is there another provision that makes every step taken in the patent office reviewable in terms of invalidating a patent, once granted?

  14. 20

    David French writes:

    Everyone is presumed to know the law except judges, who have Courts of Appeals above them to set them straight.

    I ask whether every error made before the patent office is a grounds for invalidation of a patent. 35 USC 282 provides:

    “The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:

    (1) Noninfringement, absence of liability for infringement, or unenforceability,

    (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.”

    If this list is exhaustive (and I don’t know if it is), then subparagraph (2) seems to refer only to sections 100-105 “Chapter 10 patentability of inventions”. This appears to be supported by the presence of subparagraph (3)which is specific to disclosure requirements, section 112, and reissue requirements, section 251.

    Are there any other provisions that fall within subparagraph (4) that would make every procedural error within the patent office a grounds for invalidating an issued patent?

  15. 19

    For this particular case, I’m left wondering why the wait till the very last day to file? Indecisive client?

  16. 18

    This just confirms what we all know, which is that judges are human, and therefore will make mistakes on occasion. Clearly, given the mixed signals we now have, the intent of Congress will have to be clarified. The Judiciary branch will eventually come out with the correct interpretation, i.e., the unintentional standard or the unavoidable standard can be used to revive an application (filed under 111 or 371) or reexamination proceeding for FAILURE TO RESPOND timely to a PTO adverse action, or a Notice of Allowance, or to reinstate an expired patent for FAILURE TO PAY maintenance fees by the statutory deadline (unintentional standard available here only for 24 months after last day of surcharge period). However, neither the unavoidable standard, nor the unintentional standard are available to correct a FILING DATE FOR A NEW APPLICATION or for accepting an application after the deadline for FILING it.

  17. 17

    TA – as I said on the other page where you first posted about this, the proposed amendment would be worse than Congress doing nothing. This was one misguided decision by one district court judge. It goes against 20+ years of practice, and the CAFC will not go along with it. But, that amendment could be construed as lending support to the dictrict court’s decision – and by giving a short window for thousands of patents to be “revived” it could very well have serious adverse consequences for many patent owners.

  18. 16

    A proposed amendment to S1145, the Senate version of the Patent Reform Bill of 2007, would partially reverse the Aristocrat decision.

    It would require a petition for revival be filed within 30 days of the missed date.

    The effect would be retroactive. For pending applications or patents (i.e., missed date is more than 30 days ago), the petition would have to be filed within 30 days of enactment of the bill.

    While better than the worst alternative, this would require applicants and patent owners to re-file petitions for every revived application unintentionally abandoned for a missed statutory date, as well as any corresponding issued patents, within the 30-day window. For a corporation or law firm looking back 20+ years, this could be many many cases. If the PTO elected to charge a fee (not withstanding that a substantial fee had already been paid) the costs could be significant.

    Moreover, under the amendment, if the PTO doesn’t accept the petition within 60 days, it is deemed denied. If the PTO receives thousands of petitions, they might not be able to attend to them all within 60 days.

    The provisions of the amendment wouldn’t apply to deadlines required under any treaty. I don’t believe missed 371 dates are deadlines required under a treaty, based on the fact that the national phase deadline varies with country, and that in Canada a missed national phase application can be filed up to 1 year late, but I am not certain.

    This appears to be well intended (and certainly some legislative response to Aristocrat is appropriate) but not completely thought out.

  19. 15

    It is also interesting to note that 35 USC 41(a)(7) was amended in 1999 to overcome the decision in In re Katrapat. In that case, the PTO determined that revival in reexams required a showing of unavoidable delay since the reexam statute (35 USC 305) said that reexams proceed under 35 USC 132 and 133. Therefore, since a patent under reexam was not a “patent application”, it could not be considered an “unintentionally abandoned application” under 35 USC 41(a)(7). Hence, even though 41(a)(7) is indeed identified as a patent fee statute, in 1999 Congress clearly used it as the vehicle to establish the right of the patent owner to submit an unintentionally delayed response in a reexam proceeding. I believe that was the only amendment made to 41(a)(7) in the American Inventors Protection Act of 1999, and its purpose was very clear at the time. Nevertheless, under the misquided reasoning of the court in this Aristocrat case, that amendment of 41(a)(7) is utterly meaningless since 35 USC 133 (which dictates prosecution of reexams) only mentions revival due to unavoidable delay.

    Frankly, I am not going to lose any sleep over this case – it is flat wrong.

  20. 14

    The Complaint was filed 13 months ago (6/12/06) and there are 345 documents listed on the Docket (over 26 per month)! Sounds like a juicy case.

  21. 13

    “Me – isn’t that a recent change in the PCT? I seem to recall that it is, and the PTO stated that no change in US law was needed in order to comply. Go figure.”

    You might be right, I did not have to research this issue until recently – and luckily it was for “another”.

  22. 12

    Does anybody know what the response would be for missed deadlines in the Mexican patent system? I.e. if the time periods were missed unintentionally could the patent be reinstated?

  23. 11

    “Malcolm, don’t you wonder how many times the law firm which argued this motion on behalf of the defendant filed a petition to revive the unintentionally abandoned application of one of its clients? ”

    I don’t, actually, but if you have the data please share it! ;)

  24. 10

    Good Comments: There is a real caution here for patent prosecutors. In most cases, the PTO will agree to revive your abandoned application without much documentation. When submitting your revival documents, however, you should include documentation that will convince a judge as well. This may include multiple declarations, docketing reports, law-firm procedure memos, police report, etc.

    Even if you are only claiming unintentional delay, try to make a colorable argument that the delay was unavoidable.

    Through this all, however, don’t lie or mislead the PTO in a way that would constitute inequitable conduct.

  25. 9

    Malcolm, don’t you wonder how many times the law firm which argued this motion on behalf of the defendant filed a petition to revive the unintentionally abandoned application of one of its clients?

  26. 8

    A couple thoughts. First, “unavoidable” is a strange term. Is it akin to “zero tolerance”? Is waiting to the last minute to file and then missing the deadline because the car ran out of gas on the way to the post office or because the PTO’s efiling system failed “unavoidable”?

    Short of proving that the failure to get the filing date was the government or the PTO’s fault (i.e., the file was lost at the PTO after receipt or lost by the post office or erroneously an office action was sent to the wrong address) it seems like all other failures are “avoidable” as that term is typically used.

    Also, I will note that this case throws ice water on patent prosecutors to the extent they became accustomed to reviving applications that were abandoned simply because somebody fxcked up (something that happens invariably when a certain threshold of number of applications being handled is crossed) simply by saying “oops!”, paying a “large” fee ($1500 or something like that), and begging forgiveness from the client.

  27. 7

    Me – isn’t that a recent change in the PCT? I seem to recall that it is, and the PTO stated that no change in US law was needed in order to comply. Go figure.

  28. 4

    In fact, the WIPO currently REQUIRES countries to have a method of saving cases where this happens. This is a bad outcome.

  29. 2

    Also, MPEP 711.03(c) includes this about the legislative history of 35 USC 41(a)(7):

    The legislative history of Public Law 97-247, § 3, 96 Stat. 317 (1982), reveals that the purpose of 35 U.S.C. 41(a)(7) is to permit the Office to have more discretion than in 35 U.S.C. 133 or 151 to revive abandoned applications in appropriate circumstances, but places a limit on this discretion stating that “[u]nder this section a petition accompanied by [the requisite fee] would not be granted where the abandonment or the failure to pay the fee for issuing the patent was intentional as opposed to being unintentional or unavoidable.” H.R. Rep. No. 542, 97th Cong., 2d Sess. 6-7 (1982), reprinted in 1982 U.S.C.C.A.N. 770-71.

    Interestingly, the court’s decision in Aristocrat Technologies makes no mention of this.

  30. 1

    IMHO, this case is wrong with respect to 35 USC 133 (failure to respond to an office action) being the only means to revive an application which goes abandoned due to a failure to respond to an office action. The reason is that 35 USC 41(a)(7) does indicate that an unintentionally abandoned application may be revived, and that the PTO may accept the unintentionally delayed payment of an issue fee. Granted, 35 USC 133 states that a failure to respond to an office action within 6 months results in abandonment unless the delay was unavoidable, and 41(a)(7) specifically mentions this (and sets the fee). Thus, one might argue that the provision in 41(a)(7 providing a fee for reviving an unintentionally abandoned application does not apply to applications which go abandoned under 35 USC 133 (e.g., it would only apply to petitions under 35 USC 111, which explicitly refers to both unintentional and unavoidable delays).

    However, 41(a)(7) also provides a fee for the unintentionally late payment of an issue fee. This provision in 41(a)(7), at least according to the court’s reasoning, is directly at odds with 35 USC 151 (which only allows for the unavoidably late payment of an issue fee). Since there is no other statutory provision which provides for the unintentionally late payment of an issue fee, the court’s reasoning results in the portion of 41(a)(7) which sets a fee for “the unintentionally delayed payment of the fee for issuing each patent” as surplusage – and that is a no-no when construing a statute.

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