United States: Mistake In Filing A Terminal Disclaimer Is Not A "Mistake Of A Clerical Or Typographical Nature" That May Be Corrected Under 35 U.S.C. § 255

In Japanese Foundation for Cancer Research v. Lee, Nos. 13-1678, 14-1014 (Fed. Cir. Dec. 9, 2014), the Federal Circuit reversed the district court's decision granting SJ to the Japanese Foundation for Cancer Research ("the Foundation") that the PTO acted arbitrarily and capriciously, and abused its discretion, when it refused to withdraw the terminal disclaimer on U.S. Patent No. 6,194,187 ("the '187 patent"), and vacated the district court's order that the PTO conduct additional proceedings and withdraw the disclaimer from the public record. 

The '187 patent was issued and assigned to the Foundation in 2001.  In March 2011, in-house counsel at one of the '187 patent's Japanese licensees, Kyowa Hakko Kirin, Inc. ("KHK"), contacted a paralegal working with the Foundation's Japanese patent counsel, Kyowa Law Group ("Kyowa Law"), inquiring as to whether a patent may be abandoned or disclaimed before it lapses due to nonpayment of the next maintenance fee.  The paralegal then sent a letter to the Foundation's attorney of record, stating that the Foundation wanted to abandon the patent and requesting the necessary forms and/or information to do so.

In October 2011, the Foundation's attorney of record filed a statutory disclaimer pursuant to 37 C.F.R. § 1.321(a), disclaiming the entire term of all claims in the '187 patent and requesting that the disclaimer be duly recorded.  The disclaimer was also sent to the paralegal at Kyowa Law, who then reported it to KHK.  The next day, KHK instructed Kyowa Law to contact the attorney of record and urgently ask them to restore the '187 patent.

In response, the attorney of record filed a petition to withdraw the statutory disclaimer.  The petition stated that the disclaimer had not yet been made public by the Foundation or the PTO, as it had not yet been entered into the PTO's electronic Patent Application Information Retrieval ("PAIR") database or the paper prosecution file.  The PTO denied the Foundation's petition, and the terminal disclaimer subsequently appeared in the '187 patent's prosecution file on PAIR.  The Foundation filed a petition asking the PTO to withhold publication of the terminal disclaimer in the Official Gazette, as well as a request for reconsideration.  The petition included, among other things, a declaration by the Foundation's Executive Director stating that the Foundation neither requested nor authorized the terminal disclaimer.  The PTO issued a final agency decision denying the Foundation's petition, and the Foundation appealed the PTO's decision to the district court.  The district court granted the Foundation's motion for SJ and directed the PTO to withdraw the disclaimer.  The PTO appealed.

"Here, the PTO determined that miscommunications between the Foundation and its attorney of record did not excuse the actions of the attorney, and we will not substitute our judgment for that of the agency."  Slip op. at 17.

On appeal, the Federal Circuit held that the PTO did not act arbitrarily and capriciously by refusing to withdraw the terminal disclaimer, addressing three main points.  First, the Foundation argued that the filing of the disclaimer was a "clerical or typographical error" that occurred in "good faith," as required by 35 U.S.C. § 255, which gave the PTO the authority to issue a certificate of correction and withdraw the disclaimer.  Slip op. at 9.  The Court disagreed, distinguishing the Foundation's argument that Carnegie Mellon University v. Schwartz, 105 F.3d 863 (3d Cir. 1997), enables the PTO to withdraw a mistakenly filed disclaimer.  In Carnegie Mellon, a terminal disclaimer was entered using an incorrect serial number and filing date of an issued patent, as opposed to an application that counsel intended to disclaim.  The PTO granted the petition to withdraw the disclaimer and issued a certificate of correction.  The Federal Circuit distinguished Carnegie Mellon, noting that the Foundation had not identified a mistake apparent on the face of the disclaimer, such as a transposed number or the number of a related patent.

Second, the Foundation argued that the language "clerical or typographical error" in § 255 should be read disjunctively, and, as a clerical employee, the Kyowa Law paralegal made an error correctable by the PTO.  The Court rejected this interpretation, reasoning that, although the Court had previously defined the terms "clerical" and "typographical" separately, the phrase has always been interpreted in its entirety.  The Court explained that "clerical or typographical mistakes are generally understood to include simple mistakes such as obvious misspellings that are immediately apparent."  Slip op. at 11 (quoting Superior Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358, 1369-70 (Fed. Cir. 2001)).  Additionally, the Court reasoned that the terminal disclaimer was filed by the Foundation's attorney of record, and not a clerical employee. 

Third, the Court deferred to the PTO's determination and held that it would not substitute its own judgment for that of the agency.  The PTO's principle of holding the patentee to be bound by the actions of its voluntarily chosen representative was the basis of the agency's decision that it need not delve into the miscommunications between the patentee and its attorney of record.  The Court held that this basis and determination did not constitute an abuse of discretion, and held that the PTO did not act arbitrarily or capriciously in declining to use any inherent authority it might have had to withdraw the terminal disclaimer.  Accordingly, the Court reversed the district court's decision and vacated the order that the PTO conduct additional proceedings and withdraw the terminal disclaimer from the public record. 

This article previously appeared in Last Month at the Federal Circuit - January 2015

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