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...