OWNER OF EXPIRED PATENT'S CHALLENGE TO MAINTENANCE FEE"S BROUGH TOO LATE

Georgalis v. United States Patent And Trademark Office, [2008-1260] (October 7, 2008) The Federal Circuit affirmed-in-part, vacated-in-part, and remanded-in-part plaintiff’s challenge to the PTO’s maintenance fee program.
DISCUSSION: Eight years after missing his second maintenance fee, after his late payment was rejected, rather than appealing Georgalis sued the Patent Office challenging the PTO’s maintenance fee program. The Federal Circuit said that Because Georgalis waited approximately ten years (until 2006) to file the instant lawsuit, these claims are time-barred under § 2401(a). Accordingly, the district court lacked jurisdiction to hear Georgalis’s challenges to § 41(b), including his assertions that the patent’s expiration was a taking without just compensation and that § 41(b) is unconstitutional.
The Federal Circuit affirmed the district court’s decision to grant summary judgment in favor of the USPTO on Georgalis’s claims that 35 U.S.C. § 41(c) is unconstitutional and effected a taking without just compensation. The Federal Circuit vacated the portion of the district court’s opinion granting summary judgment in favor of the USPTO on Georgalis’s claims that 35 U.S.C. § 41(b) is unconstitutional and effected a taking without just compensation, and remanded with instructions to dismiss Georgalis’s claims challenging § 41(b) for lack of jurisdiction.