by Dennis Crouch
Japanese Foundation for Cancer Research v. Michelle Lee (Fed. Cir. 2014)
[Note – Read Prof Hricik’s discussion here]
The Japanese Foundation holds several patents relating to treatment of malignancies with a drug causing cell apoptosis. See U.S. Patent No. 6,194,187. The ‘187 patent issued in 2001. In October 2011, Japanese Foundation’s attorney filed a disclaimer of the remaining term of the ‘187 patent. Then, two months later, the Foundation petitioned the USPTO to withdraw the disclaimer. However, the USPTO refused to withdraw the disclaimer — indicating that neither statute nor the rules of practice provide a mechanism for withdrawal or amendment of a fully processed terminal disclaimer.
According to the explanation from the Foundation, a paralegal at the Japanese Firm mistakenly sent a request to Foley & Lardner to abandon the patent rather than an inquiry regarding disclaimer. In particular, the USPTO argues that it should be able to fully rely upon statements by a patentee’s legal representative.
After failing to convince the USPTO to reconsider, the Foundation filed a civil action in the E.D. Va. Federal Court. The district court sided with the patentee and held that the PTO must withdraw the disclaimer “absent a finding that the Foundation actually authorized its filing.”
On appeal, the Federal Circuit has reversed – siding with the USPTO and finding that the USPTO had not acted arbitrarily and capriciously nor had it abused its discretion by refusing to withdraw the terminal disclaimer.
Under the Administrative Procedures Act (APA), an agency’s action will be set aside if it is “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” 5 U.S.C. § 706(2)(A). This standard is normally met only if the [agency] decision was not based on the relevant factors or it fails toexamine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” However, unlike actions of many federal agencies, USPTO statutory interpretations are ordinarily given no deference and USPTO decisions based upon an erroneous interpretations of the law will also be overturned.
An oddity of the case here is, although the Foundation did not file for a certificate of correction under 35 U.S.C. 255, it argued on appeal that the USPTO has inherent authority to withdrawing the disclaimer that is housed in Section 255.
In the appeal, however, the Federal Circuit found no basis for issuing a certificate of correction because the mistake in filing the disclaimer was not “of a clerical or typographical nature, or of minor character.”