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RYDEEN v. QUIGG

October 17, 1990

ROBERT J. RYDEEN, Plaintiff,
v.
DONALD J. QUIGG, Commissioner of Patents and Trademarks, Defendant



The opinion of the court was delivered by: PRATT

 JOHN H. PRATT, UNITED STATES DISTRICT JUDGE

 I. Introduction

 Plaintiff Robert J. Rydeen brings this action seeking review of a final decision of the defendant, Commissioner of Patents and Trademarks, refusing to accept late payment of a maintenance fee required to maintain plaintiff's patent in force. Defendant denied plaintiff's request for a waiver, finding that plaintiff's delay in paying the maintenance fee was not "unavoidable." 35 U.S.C. § 41(c)(1). Plaintiff also challenges the Commissioner's "no-timely-notice" interpretation of the statute in which the Commissioner declared that the Patent and Trademark Office ("PTO") has "no duty to notify patentees when their maintenance fees are due." Final Rules for Patent Maintenance Fees, 49 Fed. Reg. 34,722 (1984), reprinted in 1046 Official Gazette 34 (September 25, 1984). Presently before the Court are the parties' cross motions for summary judgment.

 Upon review of the briefs and exhibits submitted by the parties, *fn1" the administrative record and the relevant law, and for the reasons stated below, we deny plaintiff's cross motion for summary judgment and grant defendant's motion for summary judgment.

 II. Background

 U.S. Patent No. 4,409,763, covering a particular type of post and beam construction, was issued to plaintiff on October 18, 1983. The patent application was filed on March 23, 1981, and was prosecuted by Attorney Charles E. Bruzga.

 The original patent grant was sent to Attorney Bruzga, *fn3" who sent it to the inventor, Mr. Rydeen. It contained the following notice regarding maintenance fees on the inside cover:

 
If the application for this patent was filed on or after December 12, 1980, maintenance fees are due three years and six months . . . after the date of this grant, or within the grace period of six months thereafter upon payment of a surcharge as provided by law. The amount, number and timing of the maintenance fees required may be changed by law or regulation.

 According to plaintiff and Bruzga, they did not interpret this notice as a warning that they must set up a calendar system to remind them when the maintenance fees were due. They assumed that the PTO would send timely reminders and that they could rely on those reminders. Plaintiff's Cross-Motion for Summary Judgment ("Plaintiff's Motion") at 5.

 On August 31, 1984, following a period for notice and comment, the Patent Office published "Final Rules for Patent Maintenance Fees," 49 Fed. Reg. 34716 (1984). The notice indicated that "under the statutes, the Patent and Trademark Office has no duty to notify patentees when their maintenance fees are due." This is the PTO's "no-timely-notice" interpretation of the maintenance fee statutes, 35 U.S.C. §§ 41(b) and 41(c), of which plaintiff complains. The notice in the Federal Register also alerted patent holders that:

 
the Patent and Trademark Office will, however, provide some notices as reminders that maintenance fees are due but the notices, errors in the notices, or the lack of notices, will in no way relieve a patentee from the responsibility to make timely payment of each maintenance fee to prevent the patent from expiring by operation of law. The notices provided by the Patent and Trademark Office will be merely courtesy in nature and intended to aid patentees. These notices, errors in these notices or lack of notices, will in no way shift the burden of monitoring the time for paying maintenance fees on patents from the patentee to the Patent and Trademark Office.

 49 Fed. Reg. 34723 (August 31, 1984). The first maintenance fee payment for the patent at issue in this action became due on April 18, 1987 and was payable within a six month grace period expiring on October 19, 1987. For a number of reasons that plaintiff discusses at length, Attorney Bruzga did not receive a reminder notice until October 19th, the last day of the six month grace period, and did not act upon that notice until the next day. *fn4"

  Under 35 U.S.C. § 41(c)(1), the Commissioner may accept late payment of a maintenance fee if the delay is shown to the satisfaction of the Commissioner to have been "unavoidable." 35 U.S.C. § 41(c)(1). Plaintiff petitioned the PTO to accept his late filed fee and to reinstate his patent. On December 16, 1987, defendant denied plaintiff's petition on the ground that failure to receive timely notice from the PTO cannot serve as the basis of "unavoidable delay." Defendant heard plaintiff's request for reconsideration, but in a decision dated June 1, 1988, 7 U.S.P.Q.2D (BNA) 1798, did not alter its initial determination. *fn5" In denying plaintiff's request for reconsideration the PTO held that: 1) mailing of the fee reminder notices is merely a courtesy; 2) under the statutes and regulations the PTO has no duty to inform patentees when their maintenance fees are due; 3) the lack of a reminder notice will not shift the burden of monitoring the time for paying a maintenance fee from the patentee to the PTO; and 4) plaintiff did not sustain his burden of proving "unavoidable delay" pursuant to 35 U.S.C. § 41(c)(1).

 Plaintiff brings this civil action seeking judicial review of the Commissioner's "no-timely-notice" that the PTO has no statutory duty to provide patent owners with notice when their patent maintenance fees are due, and reversal of ...


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