Patent Law

Aristocrat Technologies v. IGT (pending before the CAFC).

The pending Aristocrat case is interesting for several reasons: (1) it involves the greatest fear of many practicing patent prosecutors — missing a deadline; (2) it will decide the scope of PTO authority in advance of Tafas v. Dudas; and (3) pending legislation would expand PTO authority to cover some of the issues here.

Background: The Patent Act discusses revival for unintentional abandonment due to failure to submit proper application fees (35 USC 111) and failure to rescind a nonpublication request (35 USC 122). In other cases, however, the Patent Act only explicitly allows revival of unavoidably abandoned cases — a much higher standard. These include Abandonment due to failure to respond to a PTO notice (35 USC 133); failure to pay the issue fee (35 USC 151); and failure to comply with national stage filing requirements (35 USC 371). The fee schedule (35 USC 41) further provides for a specific fee for revival of unintentionally abandoned applications as an explicit alternative to revival of unavoidably abandoned applications.

Aristocrat's patent application was originally filed in Australia, but the US national stage filing was one day late. Per its usual operation, the PTO allowed Aristocrat to revive the application based on the unintentional standard. The district court (J. Jenkins N.D. Cal.) found that the PTO lacked authority to revive the application.

Revival is Common: The USPTO estimates that it has revived approximately 73,000 patent applications since 1982. If the lower court's decision is upheld, most of the related patents would be put in jeopardy. In addition, many of the revived applications have spawned multiple family members – potentially leading to further invalidation.

In a brief supporting the appeal, the Patent argues that Section 41(a)(7) of the Patent Act authorizes the Office to revive unintentionally abandoned patent applications – regardless of the form of abandonment. As a backup, the Office demands Chevron deference:

"To the extent that any ambiguities or gaps exist between § 41(a)(7) and the other provisions of Title 35, the USPTO's reasonable and contemporaneous interpretations of its governing statute is entitled to Chevron deference. "

Beyond Chevron, the Patent Office argues that it is entitled to "great deference" because it has been applying its interpretation for so many years. See US v. Clark, 454 U.S. 555 (1982).  In amicus, the Neurotechnology Industry Organization also argues that 35 U.S.C. § 2(b)(2)(A) requires that the PTO be given great deference.

Notes:

• Briefs & Documents:
• PTO Amicus Brief
• NIO Amicus Brief 
• Aristocrat Merits Brief [Patently-O Discussion of Aristocrat Appeal Brief]
• IGT Merits Brief
• District Court Decision [Patently-O Discussion of Original District Court Decision]
• 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 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).
• This case is not the recently decided Aristocrat v. Multimedia Games.