FemSpec (FemSuite) v. Dudas (N.D.Ca. 2007)
Dr. Johnson invented an inflatable speculum for gyne exams. After Dr. Johnson was diagnosed with malignant cancer, the PTO expedited examination and the patent issued a few months before Dr. Johnson committed suicide. The son, Mr. Johnson (who had no experience with patents) became owner of the patent. The PTO was not given forwarding address information, and the patent eventually expired due to failure to pay the maintenance fee. After the patent had expired, FemSpec (a Gyne product manufacturer) bought the patent rights.
Late Maintenance Fee: Congress has designated three time-periods for late maintenance fee repayments.
- Within six months of due date: Late payment always allowed;
- Within thirty months of due date: Late payment allowed if delay was unintentional;
- Any time after that: Late payment allowed if delay was unavoidable. 35 USC 41(c).
After purchasing patent rights, FemSpec immediately filed its petition to accept late payment of maintenance fees due to an unavoidable delay – citing the following evidence:
- Dr. Johnson was suffering from terminal cancer and was prosecuting the patent pro se – and thus did not provide any instructions for maintenance fees to be paid by his heirs.
- Even if he had provided a calendar notation of maintenance fees, his heirs would not have understood its meaning because of their lack of patent law experience.
- Mr. Johnson (the heir) had no idea that a maintenance fee was due. And, because he moved, he did not receive any notice from the PTO regarding fees due.
For an unavoidable delay, however, the PTO requires due care in docketing the relevant dates and a showing that the applicant “treated payment of the maintenance fee as his most important business. In addition, the PTO requires a showing that the entire delay be unavoidable and that, despite all precautions, the patentee was “prevented from making the payment.”
Ignorance as an Excuse: On appeal from the PTO, the District Court noted “that there are situations in which ignorance of the requirements to pay maintenance fees may support a finding of unavoidable delay.” Citing In re Mattulath (D.C. Cir. 1912). However, the ignorance excuse requires that the unrepresented patent holder make some “effort to inform himself of the legal obligations associated with owning a patent.” See California Med. v. Tecnol Med. (D. Del. 1995). Complete ignorance of the fact that the patent exists can also create an avoidable excuse.
Petition to for late payment denied — Patent is expired.
Cite: FemSpec L.L.C. v. Dudas, 2007 U.S. Dist. LEXIS 8482 (N.D.Ca. 2007)