SUING THE PTO —Can You Challenge PTO Decisions?
In a recent District Court decision, a judge allowed a lawsuit to proceed against the PTO, under the auspices of the Administrative Procedures Act (APA). This case is particularly interesting, because it involves a defendant in a patent litigation bringing suit against the PTO to challenge the PTO’s decision to allow the plaintiff in the litigation to late claim priority to a prior application.In Exela Pharma Sciences, LLC v. Kappos, Exela challenged the PTO’s revival decision under 35 U.S.C. § 371(d), alleging that the PTO improperly used an “unintentional” rather than “unavoidable” standard. The PTO filed a motion to dismiss, arguing (1) the statute of limitations had passed; (2) standing; and (3) lack of reviewability.
Addressing each argument in turn, the court found that the statute of limitations only began running from the actual injury to Exela, which was the date of the infringement suit brought against them (2011)—not the date of the PTO’s decision, in 2003. As for standing, the court noted that the plaintiffs in this suit had an injury (as they have to defend against patent litigation), and that even though the infringement suit involved two patents, the fact that one may be removed was sufficient injury (as the costs to defend the litigation would necessarily increase). Finally, the PTO argued that a “third-party collateral attack of a revival decision” was not appropriate for review under the APA. The court, however, noted that “the presumption is that the APA confers a general cause of action upon all persons adversely affected by an agency action.”
The PTO argued that the result of Aristocrat Technologies precluded this type of lawsuit. The court found that Aristocratmerely stood for the proposition that improper revival may not be raised as an invalidity defense in a patent litigation. UnlikeAristocrat, the present case is a claim under the APA against the PTO, and not a defense in a patent litigation.
The court concluded by saying “[t]he Court finds no support for the PTO’s apparent proposition that certain agency actions should remain entirely unchecked.” Whatever the ultimate conclusion of this case, it is worth watching to see whether other decisions of the PTO could also be challenged under the APA.
 Exela Pharma Sciences, LLC v. Kappos et al., case no 1:12-cv-00469, (E.D. Va, August 22, 2012)  371(d) states “(d) The requirement with respect to the national fee referred to in subsection (c)(1), the translation referred to in subsection (c)(2), and the oath or declaration referred to in subsection (c)(4) of this section shall be complied with by the date of the commencement of the national stage or by such later time as may be fixed by the Director. The copy of the international application referred to in subsection (c)(2) shall be submitted by the date of the commencement of the national stage. Failure to comply with these requirements shall be regarded as abandonment of the application by the parties thereof, unless it be shown to the satisfaction of the Director that such failure to comply was unavoidable. The payment of a surcharge may be required as a condition of accepting the national fee referred to in subsection (c)(1) or the oath or declaration referred to in subsection (c)(4) of this section if these requirements are not met by the date of the commencement of the national stage. The requirements of subsection (c)(3) of this section shall be complied with by the date of the commencement of the national stage, and failure to do so shall be regarded as a cancellation of the amendments to the claims in the international application made under article 19 of the treaty. The requirement of subsection (c)(5) shall be complied with at such time as may be fixed by the Director and failure to do so shall be regarded as cancellation of the amendments made under article 34 (2)(b) of the treaty.” (Emphasis Added)  Aristocrat Technologies Australia PTY Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir. 2008)