IP Law Daily, PATENT—E.D. Va.: Inventor’s procedural arguments over abandoned patents rejected as untimely, (Jul 30, 2021)

By Brian Craig, J.D.

The inventor’s petitions to withdraw the holdings of abandonment were filed more than two months after the mailing date.

The federal district court in Alexandria, Virginia, has held that the USPTO did not err in dismissing as untimely an inventor’s petitions to withdraw the holdings of abandonment. The court concluded that the named inventor on approximately 400 patent applications failed to file the petitions to withdraw the holdings of abandonment within two months, as required by the regulation, and also failed to identify any extraordinary circumstances that would justify the delay. The court additionally held that the patent examiner’s restriction requirement, which required the inventor to limit the application to a single invention, was proper (Hyatt v. USPTO, July 28, 2021, Hilton, C.). Gilbert Hyatt is the named inventor on approximately 400 patent applications, nearly all of which were filed in 1995 or earlier. The interconnected applications contained a total of approximately 115,000 claims. In August 2013, the USPTO began issuing requirements for the inventor’s applications to more effectively examine the applications. The inventor filed suit in federal district court challenging the USPTO’s decisions to dismiss as untimely his petitions in 17 of his applications to withdraw holdings of abandonment. The inventor also asserted that the patent examiner’s "restriction requirement," which required the inventor to limit the application to a single invention, was improper. The USPTO filed a motion for summary judgment.

Abandonment. The court first concluded that the USPTO did not err in dismissing the inventor’s petitionsto withdraw holdings of abandonmentas untimely. An applicant who has received notice of abandonment of an application may file a petition for withdrawal of the USPTO’s holding. The applicant must file the petition under 37 C.F.R. § 1.181(f) within two months of the mail date of the action. Furthermore, the Manual of Patent Examining Procedure states that any petition to withdraw the holding of abandonment not filed within two months of the mail date of the notice will not be treated on its merits. The court found no case law to toll the time for a patent application to file a petition to withdraw a holding of abandonment. The petitions were not accompanied by terminal disclaimers and did not identify any extraordinary circumstances that would justify the delay. Therefore, the court concluded that the USPTO’s decisions to dismiss the inventor's petitions to withdraw holdings of abandonment as untimely were not arbitrary, capricious, or an abuse of discretion.

Restriction requirement. The court also held that the USPTO’s interpretation for a restriction requirement was proper. The procedure set forth in 37 C.F.R. § 1.129 is to provide for further limited reexamination of any application pending two years or longer. In response to a notice of abandonment, the inventor selected which claims the USPTO should examine. The inventor failed to disclose claims to a separation invention and attempted to file them many years later. The regulation is on its face unambiguous that the USPTO may issue a restriction requirement in the application. The court held that the USPTO’s interpretation of 37 C.F.R. § 1.129 and its filing of a restriction requirement was not arbitrary, capricious, or an abuse of discretion. Accordingly, the court granted summary judgment in favor of the USPTO on all counts.

The Case is No. 1:20-cv-00487-CMH-IDD.

Attorneys: Mark Wendell Delaquil (Baker & Hostetler LLP) for Gilbert P. Hyatt. Peter John Sawert, U.S. Attorney's Office, for the USPTO.

Cases: Patent GCNNews VirginiaNews USPTO