In his official capacity as Director of the USPTO, Jon Dudas, along with Yeda Research and Development Co., was recently named as a defendant in an action filed by Enzo Therapeutics. The complaint, filed July 3 in the U.S. District Court for the Eastern District of Virginia, details Enzo’s unsuccessful efforts to establish co-pendency of two US applications via filing a Petition to Revive.

The suit stems from an interference between junior party Sehgal and senior party Revel (real parties-in-interest Enzo Therapeutics and Yeda Research and Development, respectively). Because of an inadvertent failure to file a Three-month Petition for Extension of Time, Sehgal’s U.S. application 06/255,215 (the ‘215 application)– to which Enzo intended to claim priority– was deemed abandoned. The continuation application US 06/634,998 (the ‘998 application) was therefore found not co-pending with the earlier application. The Board denied Enzo’s Petition to Revive the ‘215 application, and priority of invention was awarded to Revel.

According to the complaint, Enzo asserts that the Board of Patent Appeals and Interferences violated the PTO’s regulations, abusing their discretion by deciding the Petition to Revive, and that the Director had unreasonably withheld or delayed action on both plaintiff’s 183 Petition (the accompanying petition to waive the requirement for a terminal disclaimer) and the Petition to Revive.

In its Complaint, Enzo asserts that the PTO was required to give deference to representations made in the Petition to Revive concerning a delay or inquire further into the matter:

In accordance with M.P.E.P. § 711.03(c)II.C, the PTO “relies upon the applicant’s duty of candor and good faith and accepts that statement that ‘the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 C.F.R. § 1.137(b) was unintentional’ without requiring further information in the vast majority of petitions under 37 C.F.R. § 1.137(b).”

The PTO “is almost always satisfied as to whether ‘the entire delay… was unintentional’ on the basis of statement(s) by the applicant or representative explaining the cause of the delay accompanied at most by copies of correspondence relevant to the period of delay.” M.P.E.P. §711.03(c)II.C.

Even if an applicant’s statement is not accepted, then the PTO “… reserves the authority to require further information concerning the cause of abandonment and the delay in filing a petition to revive …” M.P.E.P. § 711.03(c)II.C.

The PTO did not request further information concerning the cause of abandonment of the ‘215 application or delay in filing the Petition to Revive.

In the absence of a request for further information, the statement in the signed Petition to Revive that “the entirely delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional” should be deemed as accepted by the PTO.

Paragraphs 33-37 of the Complaint.

Enzo asserts that the Board violated PTO regulations and exceeded its authority by denying the Petition to Revive without forwarding to the Office of the Deputy Commissioner for Patent Examination Policy. Enzo further charges the Board with abuse of discretion for failing to accord proper weight to statements made in the Petition to Revive, relying instead on an unrecorded conference call between the Attorney for Sehgal and a judge in a “he-said”-“she-said” fashion.

The facts as set forth by Enzo suggest that intentional abandonment would be absurd. Enzo, in its complaint, points to the file history of the ‘215 patent and its progeny to show subsequent filings requesting a continuation application accompanied by copies of the ‘215 application; amendments to claim priority to the ‘215 parent application; acceptance by the PTO of Sehgal’s request for a continuation application as evidenced by a notation on the front cover of the continuation application and the PTO Filing Receipt; and an express request by Sehgal for the abandonment of the ‘215 parent application when the continuation was filed.

In Enzo’s words:

A registered patent practitioner would never “intentionally” cause a parent application to become prematurely abandoned and then, at the same time, file a “continuation” application (including an express request to abandon the parent on that date); the two acts are entirely inconsistent and thus the non-filing of the petition for extension of time resulting in premature abandonment could only have resulted from a clearly unintentional error. (Paragraph 57 of the Complaint.)

Enzo has asked the court to reverse the decision of the Board, expunging from the record all of the Board’s findings, and remand the case to the Board for further administrative proceedings. Enzo has further requested that the Court compel the Director to decide the 183 Petition and forward the Petition to Revive to the Office of the Deputy Commissioner for Patent Examination Policy to promptly decide the Petition.

Download the Complaint Part 1.

Download the Complaint Part 2

Thanks to Tom Scott of Hunton & Williams LLP for a copy of the complaint.

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