Japanese Foundation for Cancer Research v. Michelle K. Lee and USPTO


Docket No. 2013-1678, 2014-1014

PROST, DYK, TARANTO
December 9, 2014

Brief Summary: PTO denial of withdrawal of Attorney’s erroneously filed terminal disclaimer not arbitrary or capricious as PTO determined miscommunications between the Foundation and its attorney of record did not excuse the actions of the attorney.

Summary: USPTO appealed from DC decision granting the Japanese Foundation SJ that the PTO acted arbitrarily and capriciously, and abused its discretion, when it refused to withdraw the terminal disclaimer on US 6,104,187; the FC reversed. The Japanese licensee’s (KHK) Japanese patent counsel (Kyowa Law) sent the Foundation’s attorney of record law firm (Foley & Lardner) a letter on March 9, 2011 stating “[o]ur clients would like to abandon the captioned patent positively and invalidate this patent before the case lapses by non-payment of the next maintenance fees, which will be due on August 27, 2012…Would you please let us have the necessary forms and/or information for the procedure of positive abandonment….” This letter was not disclosed to KHK due to the March 11 earthquake, according to Kyowa’s paralegal declaration to the PTO. On October 11, the Foundation’s attorney of record filed the disclaimer and reported it to Kyowa law which sent it to KHK. KHK then instructed Kyowa to “urgently ask Foley to restore the patent.” The PTO was petitioned to withdraw the disclaimer as “erroneous and unauthorized” and denied withdrawal. The DC then ordered the PTO to withdraw the disclaimer. The Foundation argues in the appeal that the PTO has the authority to issue a certificate of correction to withdraw the disclaimer, citing Carnegie Mellon (3d Cir. 1997) (PTO withdrew disclaimer because attorney mistakenly entered serial number and filing date of issue patent rather than application; also, MPEP § 1490 allows for correction where numbers are transposed). However, the FC found no basis or withdrawing the disclaimer using a certificate of correction under the facts of this case. The Foundation also argued the PTO had the inherent authority to withdraw it, in part because it was not recorded by the FC explained that “a disclaimer is considered to be ‘recorded’ on the date that it was filed, as long as it was ‘received by the PTO in proper form and with the appropriate filing fee’” (Vectra Fitness, FC 1988). The PTO argued that “the existence of a mistake by an attorney other than the type falling under § 255 or a lack of authority from a client should not result in withdrawal of the terminal disclaimer.” The FC also explained that, “here, the patentee provided the specific authority to its attorney to file a disclaimer by filing a power of attorney” and that it “must defer to the agency’s interpretation of its own procedures and regulations [except in] ‘extremely rare circumstances’ that could ‘justify a court overturning agency action because of a failure to employ procedures beyond those required in the statute” (Vt. Yankee, US 1978). The FC disagreed with the DC that the PTO acted arbitrarily and capriciously, and abused its discretion as the PTO determined miscommunications between the Foundation and its attorney of record did not excuse the actions of the attorney”.

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