Unavoidable Delay: Ignorance as an Excuse?

PatentLawPic012FemSpec (FemSuite) v. Dudas (N.D.Ca. 2007)

Dr. Johnson invented an inflatable speculum for gyne exams. After Dr. Johnson was diagnosed with malignant cancer, the PTO expedited examination and the patent issued a few months before Dr. Johnson committed suicide.  The son, Mr. Johnson (who had no experience with patents) became owner of the patent.  The PTO was not given forwarding address information, and the patent eventually expired due to failure to pay the maintenance fee. After the patent had expired, FemSpec (a Gyne product manufacturer) bought the patent rights.

Late Maintenance Fee: Congress has designated three time-periods for late maintenance fee repayments.

  • Within six months of due date: Late payment always allowed;
  • Within thirty months of due date: Late payment allowed if delay was unintentional;
  • Any time after that: Late payment allowed if delay was unavoidable. 35 USC 41(c).

After purchasing patent rights, FemSpec immediately filed its petition to accept late payment of maintenance fees due to an unavoidable delay – citing the following evidence: 

  • Dr. Johnson was suffering from terminal cancer and was prosecuting the patent pro se – and thus did not provide any instructions for maintenance fees to be paid by his heirs.
  • Even if he had provided a calendar notation of maintenance fees, his heirs would not have understood its meaning because of their lack of patent law experience.
  • Mr. Johnson (the heir) had no idea that a maintenance fee was due. And, because he moved, he did not receive any notice from the PTO regarding fees due.

For an unavoidable delay, however, the PTO requires due care in docketing the relevant dates and a showing that the applicant “treated payment of the maintenance fee as his most important business. In addition, the PTO requires a showing that the entire delay be unavoidable and that, despite all precautions, the patentee was “prevented from making the payment.”

Ignorance as an Excuse: On appeal from the PTO, the District Court noted “that there are situations in which ignorance of the requirements to pay maintenance fees may support a finding of unavoidable delay.” Citing In re Mattulath (D.C. Cir. 1912).  However, the ignorance excuse requires that the unrepresented patent holder make some “effort to inform himself of the legal obligations associated with owning a patent.” See California Med. v. Tecnol Med. (D. Del. 1995).  Complete ignorance of the fact that the patent exists can also create an avoidable excuse.

Petition to for late payment denied — Patent is expired.

Cite: FemSpec L.L.C. v. Dudas, 2007 U.S. Dist. LEXIS 8482 (N.D.Ca. 2007)

16 thoughts on “Unavoidable Delay: Ignorance as an Excuse?

  1. 16

    “I am most concerned with companies that market their products with a patent number/notice attached but have allowed the maintenance fee to lapse (for many years). … Anything out there I should know about?”

    Yes. 35 USC s. 292:

    (a) … Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public … [s]hall be fined not more than $500 for every such offense.

    (b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.

  2. 15

    I am most concerned with companies that market their products with a patent number/notice attached but have allowed the maintenance fee to lapse (for many years). It would seem the PTO should have a place for reporting such companies and the government have a way to collect. I have not seen any cases that resolve this issue. Anything out there I should know about?

  3. 14

    Jr.E.,

    Did the petitions office give you a copy of that sole decision? How can we obtain it??

    It is not on the PTO’s FOIA site.

  4. 13

    Right you are Mr. T. There **is** such a thing as intervening patent rights provided by 35 U.S.C. 41(C)(2) which states in part:

    “A patent, the term of which has been maintained as a result of the acceptance of a payment of a maintenance fee under this subsection, shall not abridge or affect the right of any person . . . who made, purchased, offered to sell, or used anything protected by the patent within the United States, or imported anything protected by the patent into the United States after the 6-month grace period but prior to the acceptance of a maintenance fee under this subsection, to continue the use of, to offer for sale, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported.”

    Being primarily involved with the preparation and prosecution side of the business, I wasn’t aware of this statute until just now. You would think it would have made more sense to include this in section 273 with the other defenses to infringement, rather than in the part about maintenance fees. Go fig’.

  5. 12

    Right you are Mr. T. There **is** such a thing as intervening patent rights provided by 35 U.S.C. 41(C)(2) which states in part:

    “A patent, the term of which has been maintained as a result of the acceptance of a payment of a maintenance fee under this subsection, shall not abridge or affect the right of any person . . . who made, purchased, offered to sell, or used anything protected by the patent within the United States, or imported anything protected by the patent into the United States after the 6-month grace period but prior to the acceptance of a maintenance fee under this subsection, to continue the use of, to offer for sale, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported.”

    Being primarily involved with the preparation and prosecution side of the business, I wasn’t aware of this statute until just now. You would think it would have made more sense to include this in section 273 with the other defenses to infringement, rather than in the part about maintenance fees. Go fig’.

  6. 11

    Wow — may Doc Johnson RIP. His marital aids have saved many a marriage and help create the video porn industry. I nominate the Doc for the Inventor’s Hall of Fame.

  7. 10

    Wait a minute Frank and defector, what about intervening rights? Aren’t those who enter into practicing the invention while expired safe?

  8. 9

    metoo — It was unintentional up to the point where the guy died, after which it became unavoidable. A dead guy can’t pay a maintenance fee, and it takes time for the assets to be distributed and determine who has rights and obligation to pay maintenance fees. I admit I didn’t read the case yet, but from the facts presented above, it seems the court could have, and should have, exercised its discretion, given the circumstances. You have to remember that these are not experts in patent law — the court expects too much of laymen.

    Frank, I agree with you. But that is one of the risks you take when you practice a patented invention that has gone expired — it could always be revived. Anyone entering the field should understand and accept that risk.

    non — I don’t think there is a similar law here in the U.S., but I like the idea. It was only in the last decade or so that we got prior user-rights to protect people who practice an invention in secret that later becomes patented by someone else.

  9. 8

    Frank – I appreciate your “devil’s advocate” missive … and agree in large part. However, in my tiny country, if a person/company exploits the invention of a patent that has lapsed more than 6 months, or makes actual preparations for same, they are entitled to continue (but not to license the entitlement) even if the patent is restored. What “coming back to bite you” issue is there in the US? Is there not a similar law/regulation in the US ?

  10. 7

    Defector – I agree we’re moving toward facsism, but this decision is unrelated.

    Metoo has it right. The standard was unavoidable, and this guy’s mistake was avoidable.

    By the way Dennis – what the hay is “gyne”?

    It’s “GYN”, pronounced “Gee – why – en”, as in OB-GYN.

    I remember the first time I heard those letters – freshman orientation at college way back when – they announced that the females should separate to discuss obgyn issues. I asked the woman next to me, “what’s that?”, and she gave me a nasty look and wouldn’t tell me.

  11. 6

    Fascist state?
    the public policy behind finding these types of abandonment is so that the public is assured a patent is dead- to allow for public use without worries of this patent being revived and coming back to bite them.
    Also, it further incentivizes the payment of maintenance fees – so if the patent is not being publicly used and generating income, hopefully it will lapse, and the public can use the invention again.
    The rules are harsh… if you want to maintain an exclusive monopoly… jump through the hoops and be dilligent with payments.

  12. 5

    You’re are absolutely correct defector – this was a clear case of unintentional abandonment. No doubt about it. Of course that’s irrelevant once you are past the 30 month date! In other words, the relevant standard in this case was unavoidable abandonment – the fact that it was unintentional is irrelevant.

  13. 4

    It seems that the standards for “unintentional abandonment” are looking more and more like “unavoidable abandonment.” This is clearly a case of unintentional abandonment. The courts are far too quick to invalidate a patent because of some procedural screw-up by a pro-se inventor. We are ever drifting towards a fascist state.

  14. 3

    More and more these petitions are denied for routine screw-ups. IMO, someone has to admit fault to assure the petition being granted. On this one, I suppose the doc-tor did not keep a doc-ket.

  15. 2

    I recently researched this area for a patent holder who was broke, very broke. He missed the 2.5 year cutoff by a few months.

    It was discouraging reading through the denied petitions available on the PTO site. I beleived we had no chance, but I called the petitions office for some insight. They informed me that only one petition in the past ten years was granted for financial reasons.

    Pleas of ignorance receive no sympathy from the PTO. After the two and a half year period, you are screwed unless you are on the street homeless, in a coma, or have serious psychological problems!

    I deeply pity the fools.

  16. 1

    Now I realize you all have “bigger fish to fry” within the exchanges of this blog, and I for one as a Jr. Examiner appreciate and learn from the many exchanges herein.

    However, let us not overlook the obvious with this particular innovation.

    An inflatable speculum! So the apparatus is inserted into the appropriate bodily cavity *ahem* at which point the doctor then . . .??? . . . puckers up somewhere along 23 and starts to blow!?

    The figures in this patent have got to be priceless!

    *Oh come on a little humor never killed anyone, even an attorney*

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