Hot Potato: Revival Petition Must Convince Court

New York University v. Autodesk, 495 F. Supp. 2d 369 (S.D.N.Y. 2007)

NYU sued the software manufacturer Autodesk for infringement of two of the University’s gesture synthesizer software patents. Both patents stemmed from an original non-provisional application. (Serial No. 08/284,799). That application received a final office action in the Spring of 1997, but the PTO did not receive any response until November 1998 – 18 months later.

Most medical errors arise during transfer of care. Orders and other knowledge are lost when doctors and nurses go off-shift and are replaced by a new staff. A similar issue arose here. As the court spells out the facts: NYU transferred its prosecution from the Wyatt Gerber firm to Kenyon & Kenyon; After transfer, Wyatt Gerber received the the Final OA and forwarded it to both Kenyon and NYU; Soon thereafter, the Kenyon attorney assigned the case left the firm. By the six-month deadline, the application was still caught in a hot-potato game and no response was filed. In December 1997, the Examiner duly issued a notice of abandonment and (as evidenced in the prosecution history) even telephoned the Kenyon attorney who acknowledged the abandonment.

Months later, a newly assigned Kenyon attorney filed a petition to revive based on unintentional abandonment, which was granted by the PTO.

On summary judgment, the district court agreed with Autodesk that the revival was contrary to law.

Under the APA, PTO petition decisions will be upheld unless “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law.” Thus, the PTO decision will be upheld so long as there is a “rational connection between the facts found and the choice made.” APA challenges are generally reviewed on the administrative record — here that is the prosecution history.

Here, the court found that NYU was clearly on notice of the abandonment (based on the telephone call to Kenyon’s attorney); that NYU offered no justification for the delay in its petition for revival; and that the PTO offered no reasons for its revival. Consequently, the revival was an “arbitrary and capricious” act and was therefor set aside.

Case dismissed. This is no appeal.

 

Comments

[Mark Nowotarski]

If you scroll up and down, the little figures look animated.

[Elfin Magic]

So is this an open-and-shut malpractice case against Kenyon (assuming plaintiff would have won on the merits), or are NYU's hands sufficiently unclean?

[patent leather]

The lesson here is simple. As soon as you get an (unintended) notice of abandonment, file the petition to revive ASAP.

While I never received an unintended abandonment, I know from experience at many firms that it does happen, probably more than people care to admit. I hope the attorneys involved aren't going to get hit with a malpractice action now.

I wonder if the CAFC would agree with this opinion?

[stepback]

In this particular case, Dennis's enticing headline is somewhat misleading. This case involves a fact pattern where there was contradicting "evidence" in the record below and the PTO failed entirely to address the evidence.

[Dennis Crouch]

SB -- While I agree that my headlines rarely tell the whole story, this headlines is intended for practitioners thinking about 'what would I do?' I believe that the court would have sided with NYU if the university had included a full explanation of why the delay was, in fact, unintentional. (Such an explanation might not be possible here).

[jud]

The "explain yourself" angle is interesting. Do you really have to? I just saw a petition to revive after unintentional abandonment filed recently, and I don't recall any requirement for an explanatory statement. In fact, the whole "explanation" requirement seems to be covered by signing underneath statement #4 on PTO/SB/64 (which says only that the PTO "may" require additional information).

[Dennis Crouch]

True, practitioners often do not need to explain themselves in order to get the PTO to revive an application. However, during litigation your case will be determined on the adminstrative record and you will not be given any chance to privide your explanation. Thus, when there are favorable facts, it seems advisable to include those facts in your petition for revival.

[johng]

Don't answer the phone!

[George]

Thus, when there are favorable facts, it seems advisable to include those facts in your petition for revival. <<<

I don't think so. I'd rather not say anything unless I have to.

[Yet Another Anon]

I think the comments above about malpractice are based upon an incomplete understanding of the facts.

In this particular case, it is hard to tell where the fault (if any) lies.

If a response isn't filed until 18 months later, that could indicates acquiesence or a lack of involvement in the case by the client.

The decision does not reveal what the client's position at the time of abandonment was. The client could have decided to abandon the case, and then changed its assessment of the value of the case 18 months later.

Nor does the decision reveal whether the client completely outsourced all decisions regarding the case to the attorney. The decision to abandon may have been completely within the discretion of the attorney.

Nor does the decision reveal the nature of any docketing software that the firm was using to monitor prosecution and what the firm response to abandonment of the application was.

[anonexaminer]

HORRAY!!! It's about time that the PTO has been called out on their practice of re-opening EVERY SINGLE abandoned case... (and simply gobbling up the fee!)

As an examiner - we've been pretty ticked off with this stuff. Every examiner knows that the PTO has absolutely no standard of review for what constitutes an unreasonable or unintentional delay. All they care about it that the attorney checks that "unintentional" box. GIVE ME A BREAK!

Recently, to make their precious annual year goals, they have raked thru out dockets and basically forced us to send notices of abandonment on every case that was barely over 6 mos. w/o reply. They would suggest we call the attorney but admit that, "it doesn't matter what they say, anyway..." So, one month after we send the notice of abandonment, it gets revived and we get a negative count. That's the exact reason we don't want to send the notices of abandonment, anyway - We know they ofter get revived at the worst possible time. I've had cases get revived after filing a notice of abandonment after not receiving a paper for OVER 20 MONTHS!!

Well - at any rate - if you DO get a call from an examiner; be sure to say only that no paper has been filed and not - "it's abandoned". AND - make sure you check the examiner's interview summary to determine what he placed on the record.

[steven fox]

Is the administrative record the only evidence that can be reviewed by an Article III Court when deciding questions underlying the agency's grant of a patent. Maybe for an Aricle I Court. This has not been the case for Article III Courts. For example, Courts allow additional evidence when considering issues of obviousness and inventorship, and many more. As such, why would a Court not allow a patentee to submit evidence supporting his/her assertion that the delay was unintentional. If so, then why give any explanation unless the USPTO asks for it.

[Paul F. Morgan]

The examiner above has a point. Part of the problem is that the PTO has not provided in the MPEP any useful definitions or limitations on a mere bare allegation of "unintentional" abandonment accompanied by the fee for revival. This has mislead too many patent attorneys and agents into thinking that almost any abandoned application can be validly revived on that basis.

[Paul F. Morgan]

If the PTO wanted to do something simple to reduce the number of invalid or improper bare-alleged "unintentional" revivals of abandoned applications, here are a couple of suggestions:
(1) Print the following on all PTO notice of abandonment forms being mailed to applicants: "Petitions to revive abandoned applications filed more than two months after the date of abandonment may be referred to the Office of Enrollment and Discipline for possible investigation under 37 CFR 10.131, 10.77, 10.83, 10.84, etc."
(2) Require that all petitions to revive abandoned applications include the following statement, or its equivalent: "The abandonment of this application was NOT due to any prior decision or instruction by or from a client or attorney (irrespective of a subsequent change thereof) to abandon this application or to not timely respond to the outstanding USPTO office action having a response due date which caused this abandonment by non-timely response thereto."

[JTS]

Someone wrote:

"The examiner above has a point. Part of the problem is that the PTO has not provided in the MPEP any useful definitions or limitations on a mere bare allegation of "unintentional" abandonment accompanied by the fee for revival. This has mislead too many patent attorneys and agents into thinking that almost any abandoned application can be validly revived on that basis."

MPEP 711.03(c)(1) has plenty of guidance on the meaning of "unintentional", along with case citations. But even a practicioner who is not familiar with this section (esp. one who has been through law school) should have some common sense understanding of what is "unintentional". Anyone who thinks that a concious decision to abandon is "unintentional" should have to do Dudas' laundry for a month.

Incidentally, the same section explains why the PTO defers to the applicants (trust, duty, harm to patent, etc.). Why don't they defer in cases of unavoidable abandonment? Shouldn't the same reasoning apply when delay is unavoidable? The cynical answer is that the "unavoidable" type of revival has no PTO fee.

[Abe Hershkovitz]

Good rule of thumb to follow:
1. When Examiner calls, indicate that a response had not been filed, rather than intent to abandon (and then investigate why not, to make sure that the application was intended to be abandoned);
2. When filing petition to revive, do not simply check a box on the form, no matter how close you are to the date of abandonment; rather, provide a showing (even though it is not required in some instances) which includes an explanation in support of assertion of unintentional delay, showing why a timely response was not filed, when the error was discovered, and that steps were taken promptly to file a grantable petition. If the petition is granted, a judge is not likely to second guess the PTO. If the petition is not granted, additional evidence can be submitted to cure the insufficient showing. If the evidence ultimately does not support the assertion of unintentional delay, getting the petition granted by simply checking a box is a waste of your client's money, as any patent that may issue will remain enforceable only as long it is not a commercially viable patent. The minute the patent is asserted against a potential infringer, the circumstances surrounding the abandonment will be questioned and by then the evidence may no longer be there, or the memory begins to fade.

[George]

Abe,
Those are good points -- but in all the firms I've worked in, I've never seen anyone do anything but check the box and send in the fee. Revival is treated by most practioners (and the PTO) as a mere formality.

[Paul F. Morgan]

A suggestion above was that "MPEP 711.03(c)(1)[page 700-193] has plenty of guidance on the meaning of "unintentional", along with case citations." But all I see there is not really any "definition" of "unintentional", merely the exclusion from "unintentional" of "intentional" abandonment, i.e.,"deliberately permits an application to go abandoned" with various examples of that. What about shear or gross neglect or negligence for long time periods, for example? Flat out ignoring deadlines?, etc.

[anonymous]

Our company had for years provided a detailed explanation in support of a Petition to Revive for Unintentional Abandonment. We even provided evidence. Then, I believe it was about a year ago, we received a call from the Petitions Office regarding a particular Petition that was provided with such an explanation and evidence, and the PTO employee very explicitly told us to stop providing the evidence and explanations, saying they are not necessary and, to summarize, annoying to them to have to read through. Unfortunately, going forward we complied with their request. Yet another example of why one should not rely on the advice of the PTO.

[Abe Hershkovitz]

Note to anonymous. The PTO employee from the Office of Petitions who made that call to your firm was inexperienced or lazy, out of line, and I assure you did not check with the supervisor prior to making that call. Any calls of this type should be responded to by a request that the "suggestion" be put in writing (it won't be). The official policy of the Office of Petitions is that if Petitioner checks the unintentional box, absent evidence to the contrary, the petition will be granted. If an explanation is given, or a showing is made, however, the explanation or showing will be evaluated and an appropriate decision will be made. Which is exactly what a careful practitioner should want.

[Abe Hershkovitz]

Note to George: You made the right decision by leaving the firms that prefer to just check a box and treat revival as a mere formality. Now suggest a change in practice at your current firm, or tell them that you will leave.

[Also Anon]

"The official policy of the Office of Petitions is that if Petitioner checks the unintentional box, absent evidence to the contrary, the petition will be granted."

But even this is contradictory (somewhat) to the guidance provided by MPEP that the PTO will question even unintentional revivals if they are filed 1 year after abandonment - a practice I have not seen followed.

[Abe Hershkovitz]

Not contradictory, Anon. Questioning petitions filed more than one year makes perfect sense. That is prima facie evidence that the entire delay may not have been unintentional. Once the prima facie evidence is rebutted, the petition can still be granted.

[Also Anon]

I agree, it does make perfect sense. I have just not seen the PTO actually follow this practice on a regular basis.