Aristocrat Technologies Australia (ATA) v. International Gaming Technologies (IGT) (Fed. Cir. 2008 PENDING)
ATA missed its US national stage filing by one day. The PTO granted ATA’s petition to revive the application based on the applicant’s seemingly legitimate claim that the “entire delay” in filing the appropriate papers “was unintentional.”
During litigation, the district court found that the PTO lacked authority to revive unintentionally late national stage applications. Rather, according to the court, the PTO can only revive such applications when the cause of delay meets the much higher standard of being unavoidable. The Court found its statutory support from 35 USC 371, which requires the PTO to hold late national stage applications as abandoned unless “such failure to comply was unavoidable.” In the process, the court was able to compare other revival statutes within the Patent Act:
- Section 111 allows for revival of original applications unintentionally or unavoidably abandoned due to a failure to submit the oath on time.
- Section 133 allows for revival only of applications unavoidably abandoned for failure to respond to an office action.
- Section 151 allows for revival only of applications unavoidably abandoned for failure to pay the issue fee.
Thus, according to the Court, applicants can recover from forms of unintentional abandonment but not others.
Now, ATA has appealed — arguing primarily that amendments to the PTO fee statute (35 USC 41(a)(7)) creates statutory authority for reviving unintentionally abandoned applications. Section 41 specifically refers to reviving applications unintentionally abandoned under Sections 133 and 151. As mentioned above, by their terms, neither of those statutes allow for revival of unintentionally abandoned applications.
In ATA’s view, it does not need to prove that its interpretation is the “correct interpretation.” Rather, according to ATA, the PTO should be given deference in interpreting the Patent Act and thus, any reasonable interpretation of the Statute should be upheld.
ATA also makes an argument that the court’s invalidation of the patent for “improper revival” does not fit within any of the four defenses listed in 35 USC 282. That argument seemingly fails if the court simply held the patent invalid for failure to comply with Sections 371 or 133. (Section 282 allows for a finding of invalidity based on failure to meet a “condition for patentability” found in the Patent Act). On the other hand, ATA does have some caselaw supporting this position. Ferguson Beauregard v. Mega Sys., 350 F.3d 1327 (Fed. Cir. 2003). Ferguson and other similar cases are easily distinguished as dealing with administrative implementation of the revival standard rather than the broader question of whether revival for unintentional abandonment is legally allowed under the statute.
Impact: If the CAFC affirms, a large number of patents will instantly lose their value. I expect the AIPLA to file a strong Amicus brief supporting ATA. IGT’s brief supporting the lower court’s decision is expected soon.
Prediction: I expect that the CAFC will reverse — holding that the PTO does have statutory authority to revive these unintentionally abandoned applications (but not giving any deference to the PTO’s interpretation of the law).
- Read the case [LINK]
- Read ATA’s Brief [LINK]
- Read my prior discussion of the case [LINK]
- 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.
- 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).