Intellectual Property Directions

In the World Series, errors can hurt you; at the PTO, apparently, errors don’t count, at least so it seems from a recent court decision. In the case, a patent applicant was able to resurrect its application from abandonment even though the governing statute appeared to prohibit it. When an alleged infringer claimed the patent was invalid because of this improper revival the court said “improper revival…may not be raised as a defense in an action involving the validity or infringement of a patent.” Thus, the patentee got to keep the benefit of the PTO procedural error.

In this particular case, Aristocrat Technologies Australia  (ATA) missed its national filing fee deadline here in the US. Although deemed abandoned by statute, Aristocrat convinced the PTO to revive the application, saying the missed payment was “unintentional”. The statute only allows revival if the missed payment was “unavoidable”. Aristocrat later sued International Game Technologies (ITG) for infringement.

ITG successfully defended itself in district court on the basis that the application had been improperly revived from abandonment. However, on appeal to the Federal Circuit (CAFC), ATA won a reversal.

The CAFC ruled that such a procedural error at the PTO was not one of the statutory grounds for an infringement defense and to allow such a defense would open a floodgate of infringers fine-tooth-combing through PTO actions that have nothing to do with the merits of the case, looking for non-substantive errors on which to get off the infringement hook.

The CAFC pointed out that this ruling was not in contradiction to a 1995 ruling [Quantum Corp. v. Rodime, PLC] that also involved a PTO error, where it said that the statutory list of defenses was non-exclusive. The difference between that ruling (where they declared the patent invalid) and this one (where they said the patent was still valid) is the nature of the PTO errors.

In this case, Aristocrat got no benefit from missing the payment date but in Quantum the patentee was improperly allowed to broaden the scope of its claims during reexamination. Had the patent not been declared invalid, other patentees might try to broaden their claims during reexamination on the off chance the PTO would err again. Clearly broadening a patent’s claims is a substantive error.

The message from the Court to alleged infringers is that nobody likes a tattle tale. PTO errors that don’t affect the substance of your infringement will not be listened to. Only point out PTO errors that effect the substance of the case.

So, like the customer who gets to keep the little extra change a clerk hands him, Aristocrat got to keep its patent because the PTO didn’t catch their own error in time.

This entry was posted on Sunday, October 26th, 2008 at 11:02 pm and is filed under Validity, infringement. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.