Zombie patent?

[rgreen2017]

Hello,

Our firm recently inherited responsibility for a patent family with applications filed in the U.S. and in foreign countries.  In 2006, the U.S. application was filed WITH a non-publication request, and in 2007, the previous firm filed the application in foreign countries.  The non-publication request was rescinded in 2009, and the U.S. application issued in 2011.

As I understand the law, the PTO has no way of knowing about the foreign filing, so the burden is on the applicant to inform the PTO within 45 days of the foreign filing and to request that the non-pub be rescinded.  Otherwise, the U.S. application becomes abandoned, and a petition to revive is required.  Here, the PTO was informed 2 years after the foreign filing date, and a petition to revive was NOT filed while the application was pending, so I think the resulting patent is invalid. 

Has anyone ever encountered this situation?  We have talked to the PTO multiple times (including attorneys in the Patent Legal Department) and no one can give us a clear answer.  I think the best option might be reissue, but I'm not sure if this scenario meets the requirements.

Thanks!!

[midwestengineer]

Hello,

Our firm recently inherited responsibility for a patent family with applications filed in the U.S. and in foreign countries.  In 2006, the U.S. application was filed WITH a non-publication request, and in 2007, the previous firm filed the application in foreign countries.  The non-publication request was rescinded in 2009, and the U.S. application issued in 2011.

As I understand the law, the PTO has no way of knowing about the foreign filing, so the burden is on the applicant to inform the PTO within 45 days of the foreign filing and to request that the non-pub be rescinded.  Otherwise, the U.S. application becomes abandoned, and a petition to revive is required.  Here, the PTO was informed 2 years after the foreign filing date, and a petition to revive was NOT filed while the application was pending, so I think the resulting patent is invalid. 

Has anyone ever encountered this situation?  We have talked to the PTO multiple times (including attorneys in the Patent Legal Department) and no one can give us a clear answer.  I think the best option might be reissue, but I'm not sure if this scenario meets the requirements.

Thanks!!

Why do you believe that the issued patent may be invalid?  Failure to follow USPTO rules is generally not a basis for invalidating a patent, with a few exception related to the duty to disclose, fraud, etc.

How would a reissue cure the procedural issue that you have identified?  A reissue can only cure specific, limited defects.

[bluerogue]

The PTO is not going to comment on whether a patent is valid.  To the PTO all issued patents are valid, period (yeah, yeah <mumble> IPRs).  I doubt you'll get much more of an answer from the legal office. The only issue that I can think of in terms of invalidity, would be inequitable conduct for not publishing as required (e.g. you knew of the requirement and deliberately ignored it).  That's a litigation question and fairly fact intensive. I don't know the answer to that. 

[rgreen2017]

Why do you believe that the issued patent may be invalid?  Failure to follow USPTO rules is generally not a basis for invalidating a patent, with a few exception related to the duty to disclose, fraud, etc.

How would a reissue cure the procedural issue that you have identified?  A reissue can only cure specific, limited defects.

The reason I believe that the patent is invalid is because of the following.  35 USC 122(iii) states: "An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned."  See also corresponding CFR 1.213(c), which states "The failure to timely notify the Office of the filing of such foreign or international application shall result in abandonment of the application in which the nonpublication request was submitted."

Timely notice was not provided, so the application was abandoned.  Maybe I'm wrong, but I don't see how a patent issued on an application that was abandoned during prosecution can be valid. 

I realize that validity is typically something that would come up during litigation or some other post-issuance proceeding.  However, we have become aware of the problem now, and the client wants to fix it before we get to that point.  As you noted, reissue is very limited, so I don't know if that will fix it.

[rgreen2017]

The PTO is not going to comment on whether a patent is valid.  To the PTO all issued patents are valid, period (yeah, yeah <mumble> IPRs).  I doubt you'll get much more of an answer from the legal office. The only issue that I can think of in terms of invalidity, would be inequitable conduct for not publishing as required (e.g. you knew of the requirement and deliberately ignored it).  That's a litigation question and fairly fact intensive. I don't know the answer to that.

I do think (at least part of) the reason we can't get a straight answer from the PTO is that they think we are asking them whether the patent is valid.  The question we need answered is "assuming the patent is invalid, what can we do to fix it?"  Maybe if we can get someone at the PTO to understand that, we can get an answer... 

I agree that there is a potential inequitable conduct issue, which is messy and which the client would very much like to avoid.  Check out the statements on the form that the attorney signs to rescind the non-publication request.

[bluerogue]

I realize that validity is typically something that would come up during litigation or some other post-issuance proceeding.  However, we have become aware of the problem now, and the client wants to fix it before we get to that point.  As you noted, reissue is very limited, so I don't know if that will fix it.

I'm not sure there is a fix.  As noted in a different thread, unintentional lapses in not following prosecution rules during prosecution does not necessarily make a patent invalid.  The problem here is that you're potentially looking at an abandoned patent and would need a petition to revive, but because the patent is issued, there can be no petition to revive. I don't think there is a way to fix that. At the very least you can point to good faith steps in trying to fix the issue after you've discovered it.  Whether a judge/jury would agree that the conduct was by mistake and therefore excusable is anyone's guess.  As to fixing it now, I think you might be out of luck.  Hopefully someone else can come up with a better idea.

[lazyexaminer]

If you believe that this error causes the patent to be invalid then sure, you can file a reissue application...whether this will eventually get reissued is hard to say. At the very least this might force the Office to go on the record somehow because they will have to determine if the claims should be rejected under 35 USC 251, so they will have to determine if there is an error correctable by reissue...best case for you, they might say "There is no error to correct because the patent is not in fact inoperative or invalid" and you let the reissue go abandoned, keeping the patent (surrender no longer happens until it actually reissues). While certainly not binding on the courts, this would seem to at least lessen any cloud over the patent. Worst case, they might say "Yes, the patent is invalid, but this is not the type of error correctable by reissue" the reissue cannot issue and goes abandoned and your patent now has a very black cloud over it. Middle ground, there is an error correctable by reissue...I am not sure how you would go about correcting it though. Is simply disclosing this foreign app during the reissue enough? Reissue applications are not published so you can't really get a redo where you disclose and then permit publication in time. Do you just pay an extra revival fee? It's tough to correct the error of "this should have been abandoned and revived but never was." Presumably during the prosecution we would suggest something you can do, and then hopefully the courts would see that as acceptable.

This might also be an instance where Supplemental Examination is useful, if you think inequitable conduct is an issue. See MPEP 2800. SE somewhat inoculates you against inequitable conduct. 35 USC 257(c). You can submit items of information to correct factual information. See MPEP 2809.01. This is unusual so I have no idea what the Office will think of such an SE request, or again whether there is any real remedy during the SE to fix what happened.

Neither of these options seem great but they are something.

[rgreen2017]

Just FYI, we did finally get in touch with someone in the USPTO Office of Petitions who knew exactly what we were asking and had actually encountered this situation before.  He said that we need to file a petition to revive.  That may seem a little odd at this point in prosecution (or the lack thereof) but there is precedent for it.  I found a district court case involving an issued patent with a similar fact pattern, and the PTO granted the petition to revive in that patent. 

[midwestengineer]

Why do you believe that the issued patent may be invalid?  Failure to follow USPTO rules is generally not a basis for invalidating a patent, with a few exception related to the duty to disclose, fraud, etc.

How would a reissue cure the procedural issue that you have identified?  A reissue can only cure specific, limited defects.

The reason I believe that the patent is invalid is because of the following.  35 USC 122(iii) states: "An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned."  See also corresponding CFR 1.213(c), which states "The failure to timely notify the Office of the filing of such foreign or international application shall result in abandonment of the application in which the nonpublication request was submitted."

Timely notice was not provided, so the application was abandoned.  Maybe I'm wrong, but I don't see how a patent issued on an application that was abandoned during prosecution can be valid. 

I realize that validity is typically something that would come up during litigation or some other post-issuance proceeding.  However, we have become aware of the problem now, and the client wants to fix it before we get to that point.  As you noted, reissue is very limited, so I don't know if that will fix it.

Abandonment during prosecution is not a basis for invalidating an issued patent.  Abandonment is a procedural device.  Once the patent is issued there are only a specific, enumerated number of grounds for invalidating the issued patent.

Please post the cite to the district court case that you found.  I would be interested in reviewing the case.

[rgreen2017]

The case is Arrow Int'l v. Spire Biomedical, 443 F. Supp. 2d 182.  See also Arrow Int'l, Inc. v. Spire Biomedical, Inc., 635 F. Supp. 2d 46.