For Want of a Nail

Submitted by patentadmin on Wed, 03/02/2011 - 12:32

Sometimes, the failure to provide adequate training to support staff can have disastrous consequences. (Regents of the University of Minnesota v. David J. Kappos)

The University is the owner of a patent directed to a device for correcting a heart defect which allows blood to flow between the right and left sides of the heart. In 2007, the University sued AGA Medical Corp. for infringing the patent. AGA moved for summary judgment on the grounds that the patent had been cancelled three years earlier due to nonpayment of the maintenance fee. Oops! The trial court granted the motion.

After investigating the matter, the University claimed that the failure to pay the maintenance fee was due to a “docketing error by a docketing clerk” who had erroneously entered the word “abandoned” on a form sent to an organization which managed the University’s intellectual property. It petitioned the Patent Office for reinstatement of the patent, claiming that the failure to pay the maintenance fee was “unavoidable.” The Patent Office rejected the petition, on the grounds that the University had failed to prove that the docketing system was as sophisticated as it should have been, or that the docketing clerk had received adequate training. The University repeated its petition. The Patent Office repeated its rejection.

The University then sued Mr. Kappos – the current Commissioner Of Patents – in the U.S. District Court for the Eastern District of Virginia, once again arguing that the abandonment was “unavoidable” and that the patent should, therefore, be reinstated. AGA, apparently better at keeping track of details than the University, intervened on behalf of Mr. Kappos (there’s no interest like self-interest).

The district court agreed with the PTO, holding that the University had not provided sufficient proof that the failure to pay the maintenance fee was “unavoidable.” Once again, the University appealed, this time to the Court of Appeals for the Federal Circuit. The C.A.F.C., in a brief, one-page opinion, affirmed the district court decision. So, unless the University decides to petition the Supreme Court, it’s over. We wonder what happened to the clerk?

THE LESSON TO BE LEARNED: “Unavoidable” means exactly that; a successful petition for reinstatement requires proof of a good docketing system, operated by well-trained personnel.

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