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December 11, 2014


Yet another case of the PTO having the power to correct a problem and instead choosing to be a bunch of jerks about it. And the CAFC choosing to let them be a bunch of jerks.

I wouldn't worry about malpractice in this case, the instructions from the associate were pretty clear and I think we all would have filed the disclaimer. But perhaps in the future we should get clients to sign an explicit waiver before we file such disclaimers.

Courts and agencies recognize that computer failures, weather, and clerical errors cause mistakes, and give the applicant a chance to reverse the mistake: e.g. require the attorney of record to show that there was an error, show that the error is not fraudulent or part of long standing and uncorrected problems, and maybe pay a fee. You may not get always relief, but where else is there a blanket prohibition on correcting such harmless errors, or even considering evidence?

Here, the CAFC appears to make a new rule that anything filed by an agent of record cannot be a clerical error, unless the error "appears on the face of the document." This is really troubling for a few reasons.
1. Why is "clear on its face" the proper standard for determining a clerical error? How do you know if the error is clear on its face? The attorney in Carnegie Mellon disclaimed the wrong CMU patent, for which he was the agent of record. How is that a clerical error that is clear on its face?

2. The rationale that there can be no clerical error if filed by a non-clerical person would also appear to apply to solo inventors, and any person acting under the authority of an attorney. Everything filed at the PTO must be through a registered agent/attorney. As a result, no TD filing at the PTO can ever be a clerical error. Did the US Congress really intend to remove TD filings from the normal standards it applies to other arms of government? I see nothing special in the statute.

3. The reasoning also could be applied to other filings unless there is a specific mechanism for withdrawal already in the statute. That is dangerous.

4. The decision seems a little removed from the real world. You have inventors, licensees, investors, US law firms, foreign law firms. Language differences. Cultural differences. Even in the USA, when everyone is speaking English, it is hard to get scientists, businessman, and lawyers on the same page. Then you have various clerical people, computer systems. Heck, there was an earthquake in this case. But the court says none of this matters.

Basically, as the "scratching" noted, the PTO can do whatever it likes. That's not a good sign.

I pulled up the Carnegie Mellon case, and it really is an odd one. It seems that CMU was suing for damages not only its outside attorney for messing up the TD, but also the PTO for accepting it. So the PTO withdraws a TD when you take it to court for $$, but not when someone asks nicely.

Talk about perverse incentives

Unreasonable. If the mistakes unintentionally made on inventors can be corrected, why this unintentional mistake can not be corrected?

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