Patent Office Information

You lost your patent, just as I did, trying to pay an overdue fine on a maintenance fee using Patent Office Form PTO/SB/65 – Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent.

If you bring a lawsuit against the Patent Office charging that their decision was “arbitrary and capricious,” chances are you’ll lose. Sorry! Typically the court will hold that the government’s action in revoking your patent was within the authority of the Patent Office. The basis for the court’s decision will be a determination that the Patent Office was not “arbitrary and capricious” in its action, which is the standard the courts apply in such matters. The courts defer a great deal to the authority and expertise of the government agencies in such matters. The court will review the Patent Office’s determination that a reasonable and prudent person would have taken steps to ensure payment of the maintenance fee, and will determine that the Patent Office considered all important aspects of the petition and made a determination that was consistent with the evidence. Given the very narrow nature of the review of a determination by the Patent Office, the court will probably hold that the Patent Office’s action was not an abuse of discretion.

However, there is an additional approach that you and your lawyer might want to consider. It is that the Paperwork Reduction Act prohibits a penalty (such as losing your patent) based on the use of a form that does not comply with the Act. In my humble opinion, Form PTO/SB/65 and the request for additional information in your denial letter did not comply with the law, therefore, you should not have been penalized.

This website documents a lawsuit I brought several years ago against two federal agencies and a private contractor concerning the content and processing of Form PTO/SB/65. I settled out of court with them.

If you feel strongly enough about the loss of your patent to bring a lawsuit, I want you and your lawyer to have the benefit of the exhibits that I amassed for my lawsuit. If enough inventors harass them with lawsuits, maybe they will rethink the concept of maintenance fees. And maybe, along the way, you can get your patent reinstated. As long as you don’t hold me personally responsible, you are welcome to use any exhibits on this website.