The opinion of the court was delivered by: OBERDORFER
The defendant moves to vacate the Court's Order of September 12, 1978, on the ground, among others, that it was based on a misapprehension of administrative practices. Plaintiff was not represented by counsel, and was unable to appear physically at the oral argument so that the Court looked to the official defendant for guidance in a field previously unfamiliar to the Court. On April 12, 1978, before the oral argument, the Court entered an Order requesting advice about, among other things:
the Commissioner's practice with respect to refusing to issue patents after notice of allowance has been given, where the applicant timely pays all required fees.
(A copy of this Order is attached as Appendix A.) At the oral argument, a colloquy about the administrative practice included the following:
THE COURT: Do you know it as a practice to withdraw cases because of prior art?
MR. SEARS: I can, of course, refer to the Hunt and Hull cases.
THE COURT: Well, they are pretty old. What I want to know is what these guys do down there every day.
MR. SEARS: This isn't an every-day occurrence, believe me.
THE COURT: Well, every year since 1875. There must have been several cases.
MR. SEARS: I can't document those cases which never issued as patents, though.
(Excerpts from the transcript of the oral argument are attached as Appendix B.) Defendant's Memorandum in support of his Motion now urges, nevertheless, that there is an administrative practice, supported by regulation and an 1878 decision of the Secretary of the Interior, of withdrawal of applications in certain circumstances after notice of allowance and fee payment.
The cited regulation provides, as does the governing statute, 35 U.S.C. § 151, that upon such notice and payment the patent is to issue. The regulation, unlike the statute, goes on to say that the Commissioner may withhold such issue even after notice of allowance and payment because of:
mistake on the part of the (Patent) Office, or because of fraud or illegality in the application, or for interference. 37 C.F.R. § 1.313(b) (1978).
And the Patent and Trademark Office has now submitted examples of recent withdrawals pursuant to that regulation. For example, the Patent and Trademark Office withdrew on its own initiative a number of applications involving computer programming after payment of the fee following the Supreme Court's decision in Gottschalk v. Benson, et al., 409 U.S. 63, 93 S. Ct. 253, 34 L. Ed. 2d 273 (1972), holding that certain such programs are not patentable.
Whatever may be the validity of that regulation and these withdrawals in light of the statute's peremptory language, the claimed exceptions do not by terms or example justify withdrawal here. This withdrawal was effected Ad hoc in response to an irregular, Ex parte communication from the applicant's litigating adversary. That is quite different from a withdrawal, for example, for fraud or in deference to a landmark decision of the United States Supreme Court. Defendant's contentions are unpersuasive, and the Court will deny the Motion.
The Court is impressed, however, by defendant's representation that the Patent Board of Appeals may soon decide plaintiff's pending appeal from the denial of his reissue application. In order to give the parties reasonable opportunity to have a complete record, the Court will grant a limited stay of the effective date of its order to permit consideration of that decision when it becomes available. To this end the Court requests that the parties submit a copy of that decision as soon as possible after it becomes available.
Accordingly, after review of defendant's Motion to Vacate Judgment and Motion for Stay, and the points and authorities cited therein, it is this 2d day of November 1978, hereby
ORDERED: That the Motion to Vacate Judgment is DENIED, and it is
FURTHER ORDERED: That the Judgment and Order filed September 12, 1978, is hereby stayed until December 1, 1978, to permit reconsideration or modification in light of the forthcoming decision of the Board of Appeals, unless ...