Validity After Revival

The Federal Circuit held in Aristocrat v. IGT that improper revival is not a defense to infringement under title 35. Specifically, the court concludes that “[t]he salient question, then, is whetehr improper revival is “made a defense” [quoting 35 U.S.C. § 282] by title 35. We think it is not.”

The Northern District of California found that the USPTO exceeded its statutory authority to revive an unintentionally abandoned application because, in part, 35 U.S.C. 133 only permits revival for unavoidable abandonment (Aristocrat Tech. v. Internat'l Game Tech). Authorization bestowed by 35 U.S.C. 41 to accept fees for unavoidable or unintentionally abandoned applications was not found sufficient to circumvent the plain language of section 133. In the related case, Black v. Ce Soir Lingerie Co., et al.), currently working its way through the Eastern District of Texas, defendants lost a summary judgment motion attempting to invalidate the patent on the same grounds argued in Aristocrat.

• Summary of issues in Aristocrat; links to court filings and background material; discussion

Earlier this year, the Northern District of California found that the USPTO exceeded its statutory authority to revive an unintentionally abandoned application because, in part, 35 U.S.C. 133 only permits revival for unavoidable abandonment (Aristocrat Tech. v. Internat'l Game Tech). Authorization bestowed by 35 U.S.C. 41 to accept fees for unavoidable or unintentionally abandoned applications was not found sufficient to circumvent the plain language of section 133. Now, a new case, Black v. Ce Soir Lingerie Co., et al.) has been filed in the Eastern District of Texas in which defendant's motion for summary judgment seeks to invalidate an issued patent on the same grounds. Both the Aristocrat decision and the motion for summary judgment in the Black case present a compelling argument that the plain language of the statute fails to give the PTO authority to allow applications to be revived that were unintentionally abandoned. On the other hand, a 1989 Decision on petition by the Commissioner for Patents presents the opposing view that the PTO derives adequate authority under 35 U.S.C. 41.

• Black v. Ce Soir
  • Summary, discussion
• Aristocrat Tech. v. Internat'l Game Tech.
  • Summary, discussion