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Revival of the National Stage of PCT Applications at the USPTO

U.S. Patent Rules (see 7 CFR 1.137) permit abandoned patent applications to be revived if the applicant asserts that the abandonment was either unintentional or makes a showing that abandonment was unavoidable. The U.S. patent statute refers to possible revival in only two situations: failure to respond to an official action within six months of its issue [35 USC 133] and failure to enter the U.S. national phase of a PCT application within thirty months of the claimed priority date [35 USC371(d)]. In both cases, the patent statute refers to possible revival in cases where the delay was unavoidable and makes no mention of revival in the case where delay was unintentional. Only the patent rules adopted by the USPTO speak to reviving an application which has become abandoned unintentionally.

Last year in Aristocrat Technologies Australia PTY Ltd. v. International Game Technology, the district court for the Northern District of California held that revival of an application where the U.S. national phase entry was one day late was possible only if one met the “unavoidable” standard set by the patent statute. It held that this standard had not been met and concluded that this failure meant that the patent was invalid.

On September 22, 2008, the Court of Appeals for Federal Circuit (CAFC) reversed the district court’s decision on invalidity on the basis that “improper revival” was not a ground of invalidity under either of the two provisions relied on by the district court. So far as 35 USC 282(2) was concerned, this provided for invalidity if “a condition for patentability” was not met. However, the court read this requirement as applying only to the defenses of lack of utility and eligibility (patentable subject matter), novelty and non-obviousness. (Note: issues relating to defects in the specification and claims, as set out in 35 USC 112, are listed in a separate subsection of 35 USC 282.) The second basis for the district court’s holding was 35 USC 282(4) (providing a defense based on “any other fact or act made a defense by this title”). In this case, the Federal Circuit again found that improper revival is not a ground of invalidity under 35 USC 282(4) because Congress had not made Sections 133 and 317(d) defenses. The court reasoned that, if 35 USC 282(4) covered breach of any requirement of the Act, then the provisions of 35 USC 282(2) and 282(3) would be redundant. The court noted that several sections of the Act did in fact provide that breaches of them provided invalidity defenses to infringement actions. The court acknowledged that 35 USC 282 was not an exhaustive list of grounds of invalidity, but held that there were no policy reasons for finding invalidity in the present case.

Significantly, having decided that the patent before it was not invalid on the ground of improper revival, the court expressly declined to answer the question of whether the Patent Act permits revival only upon a showing of unavoidable delay and whether the USPTO rules permitting revival in cases of unintentional delay in U.S. national phase entry are valid. Thus, while there should not be problems for cases which have previously been a revived on the basis of unintentional abandonment, until the issue of the validity of the rules has been decided or new rules issued, it is important to take all possible steps to ensure that the thirty month term for U.S. national phase entry is complied with. Similar comments apply to the statutory six month term for response to official actions.

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