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The High Bar for Challenging an Improperly Revived Patent
Almost two decades ago, Kevin Rivette and David Kline published Rembrandts in the Attic, which reminded patent holders that they should unleash the competitive power of their portfolios. But patents are only of value while they are in force, and to keep a patent in force for its full term, a patent holder must periodically pay maintenance fees. If the patent holder does not pay these fees, the patent will lapse before its maximum term expires.
Because accidents happen, the patent law provides means by which to revive patents after they lapse, provided that the lapse was unintentional. The process for reviving an unintentionally lapsed patent is straightforward, and it rarely involves an inquiry by the U.S. Patent and Trademark Office (USPTO) into the circumstances behind an assertion of unintentionality. The recent decision In re Rembrandt Technologies LP Patent Litigation¸ 2017-1784 (Fed. Cir. Aug. 15, 2018) is a reminder of both the potential consequence of a patent holder's disingenuous assertion of unintentionality and the challenges that defendants face when raising the improper filing of a petition to revive a lapsed patent as a defense.
Revival of Lapsed Patents
Patent maintenance fees must be paid three times over the life of the patent. 35 U.S.C. §41(b)(1). There is a deadline for paying each of these fees and there is a grace period following the deadline in which, for an additional fee, the payment will still be accepted. 35 U.S.C. §41(b)(2). When there has been an unintentional failure to pay a maintenance fee, a patent can be reinstated, provided that the patent holder submits: 1) the outstanding maintenance fee; 2) a surcharge; and 3) a statement that the delay in payment was unintentional. 37 C.F.R. §1.378(c).
The USPTO has discretion when determining whether to grant a petition for revival. As a matter of practice, the USPTO typically relies on the representation by the patent holder that the missing of a deadline was unintentional, and therefore, generally does not ask for an explanation as to why a maintenance fee was not timely paid.
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