Failure to Pay Maintenance Fee Was Avoidable

Millman v. US Patent and Trademark Office, [2007-1403](December 5, 2007)[MAYER, SCHALL and LINN] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment on its motion to dismiss or in the alternative for summary judgment affirming the denial of Millman's request to reinstate his patent for failure to pay maintenance fees.
BRIEF: Millman failed to pay maintenance fees on his patent. He filed a petition that non-payment was unavoidable. Such a petition must include "[a] showing that the delay was unavoidable since reasonable care was taken to ensure that the maintenance fee would be paid timely and that the petition was filed promptly after the patentee was notified of, or otherwise became aware of, the expiration of the patent. The showing must also enumerate the steps taken to ensure timely payment of the maintenance fee, the date and the manner in which patentee became aware of the expiration of the patent and the steps taken to file the petition promptly." 37 C.F.R. § 1.378(b)(3). In determining whether a delay in paying a maintenance fee was unavoidable, one looks to whether the party responsible for payment of the maintenance fee exercised the due care of a reasonably prudent person. The Federal Circuit said that "The PTO properly determined that Millman had not acted in a manner consistent with a reasonably prudent person. He took surprisingly little interest in even surficial details of his issued patent, such as the schedule of maintenance fees on the inside cover. He was made aware that maintenance fees would become due in the patent itself, and in a letter from his patent counsel upon issuance. When he missed his first deadline and subsequently terminated his attorney, he took possession of all files related to the patent, but did not examine them before placing them in storage for over three years." The Federal Circuit concluded that "The PTO’s decision that Millman's delay was not unavoidable was not "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law."