Rule Review - Japanese Foundation v. Lee: Miscommunication Between Attorney And Clients Insufficient To Withdraw Terminal Disclaimer

The Director of the U.S. Patent and Trademark Office (USPTO) may issue a certificate of correction "[w]henever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith . . . if the correction does not involve such changes in the patent as would constitute new matter or would require re-examination." 35 U.S.C. § 255. In Japanese Foundation for Cancer Research v. Lee, 773 F.3d 1300 (Fed. Cir. 2014), the Federal Circuit reversed a district court's order directing the USPTO to withdraw a properly filed terminal disclaimer, and held that a paralegal's mistaken belief that the patentee sought to disclaim the patent was not a "clerical error" that the USPTO was statutorily empowered to correct. The court held that the USPTO did not act arbitrarily, act capriciously, or abuse its discretion in declining to use any inherent authority to withdraw terminal disclaimer.

In Japanese Foundation, the attorney of record filed a terminal disclaimer for the claims of U.S. Patent No. 6,194,187 ("the '187 patent"). Two months later, the attorney of record filed a petition to withdraw the statutory disclaimer asking the USPTO to withhold publication of the terminal disclaimer in the Official Gazette, or in the alternative to grant relief under 37 C.F.R. §§ 1.182 and 1.183, "to invoke the discretion of the director and suspend the rules." In this later petition, the Foundation (patentee) included signed declarations from a number of people associated with one of the licensees of the '187 patent and the Foundation's Japanese patent counsel. Id. at 1303. The declarations outlined the series of events that preceded the filing of the patent disclaimer. One of the licensees of the '187 patent asserted that it only intended to obtain guidance from U.S. counsel as to whether the patent could be disclaimed prior to its expiration. Id. The inquiry was posed to U.S. counsel by a patent paralegal working for Japanese counsel to the licensee. The instruction e-mail read as follows:

Dear Sirs: Our clients would like to abandon the captioned patent positively and invalidate this patent before the case lapses by non-payment of the next maintenance fees, which will be due on August 27, 2012. Would you please let us have the necessary forms and/or information for the procedure of positive abandonment, preferably by...