Pedantic Patent Offices, Persistent Pro Se 'pellants…Puh-leez!

I

Some readers may recall last summer's CAFC decision in Taylor v USPTO.  That was the case where Mr. Taylor, acting on advice given by the USPTO over the phone, paid a maintenance fee for his US 5,1787,701 with a check that was $10 short of the requisite amount.  The USPTO cashed the check, never informed Mr. Taylor about the shortfall, then deemed the patent to have lapsed for failure to pay the maintenance fee.

Mr. Taylor only discovered this several years later, when he went to pay the next maintenance fee.  His efforts to have the patent reinstated were rebuffed, as were his efforts to get his money back, in part on the grounds that he didn't pay the $200 petition fee, a fee he said he couldn't pay because he was indigent.   So he sued the USPTO pro se, asserting it had misappropriated the $1030 had paid and seeking $1,000,000,000 in damages for the patent he no longer had. 

 The district court dismissed the case for failure to state a claim upon which relief could be granted.  On appeal, the CAFC politely told the USPTO to quit being a bunch of anally retentive weenies, and remanded the case to the district court with instructions to "enter judgment in accordance with this opinion", including ordering reinstatement of the patent upon payment of all outstanding maintenance fees.  

But there's more to the story.  In December 2009, on remand, per the CAFC's instructions, the District Court ordered the USPTO to refund the $1030 and to reinstate the patent upon payment of all outstanding maintenance fees.  That didn't satisfy Mr. Taylor, who wanted the billion dollars he'd asked for.  So he again appealed to the CAFC, asking it to reopen the proceedings regarding his claim for $1B in monetary relief.

But whereas in the previous round, the CAFC had been indulgent toward the indigent Mr. Taylor, this time it unsurprisingly showed no such leniency.  In a decision issued last week, the CAFC ruled that since Taylor had failed to raise the damages claim in his appeal of the original District Court decision, he had forfeited that claim.  

Interestingly, Mr. Taylor apparently still hasn't paid the maintenance fees, and the USPTO still hasn't refunded his $1030.  PAIR lists the patent as still being involved in court proceedings, and the maintenance fee page lists the patent as having lapsed in 2001.  Do you think the USPTO will refund the money with interest?  Or credit the interest toward whatever Taylor still needs to pay?  

II

The Israel PTO imposes a fee for making changes in the Patents Register.  This includes not only changes in the identity of the applicant/patentee, but also changes in the address of the applicant or the attorney.  Seems a little ridiculous to make an applicant pay for changing counsel.  It takes the ILPTO secretary a few minutes at most to record the change.  The requirement seems especially silly when one realizes that until the patent is granted, it's not in the Register.  

Be that as it may, a colleague reported to me that he took over representation of an application and paid the requisite 227 shekel fee online on June 16.  (Current exchange rate is about 3.88 shekels/dollar.)    But unlike in the USPTO's online filing and payment system, such payments aren't recorded at the ILPTO until the receipt is actually mailed by the applicant or attorney to the ILPTO.  In this case, the inventor only signed the power of attorney on June 30.  By the time the POA and payment receipt had arrived at the ILPTO in July, the fee had gone up.

By a shekel.  

That's an increase of less than 25 cents in people money.

So the ILPTO mailed a letter to my colleague, telling him that his payment was a shekel short.

The stamp alone cost 1.7 shekels.  I don’t know what the secretary's time and envelope cost.  I do know that my colleague's time to pay the outstanding shekel and send the receipt to the ILPTO will be worth somewhat more than a shekel.

 

III

I guess it's comforting, in a perverse way, to know that patent offices on both sides of the Atlantic can be pedantic.  It's confirmation that when they send an unnecessary OA because they're being overly formalistic, they're not picking on me or my client.  That's just the way they are. 

The denouement of the Taylor case also shows that just because the USPTO is wrong doesn't necessarily mean that a solo inventor is right.  Sort of the patent world corollary to "Just because you're paranoid doesn't mean they're not out to get you."