398 F.2d 762 (D.C. Cir. 1968), 21346, Brenner v. Ebbert

Docket Nº:21346.
Citation:398 F.2d 762, 157 U.S.P.Q. 609
Party Name:Edward J. BRENNER, Commissioner of Patents, Appellant, v. Robert J. EBBERT and Design Products Corporation, Appellees.
Case Date:May 23, 1968
Court:United States Courts of Appeals, Court of Appeals for the District of Columbia Circuit
 
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Page 762

398 F.2d 762 (D.C. Cir. 1968)

157 U.S.P.Q. 609

Edward J. BRENNER, Commissioner of Patents, Appellant,

v.

Robert J. EBBERT and Design Products Corporation, Appellees.

No. 21346.

United States Court of Appeals, District of Columbia Circuit.

May 23, 1968

Argued March 18, 1968.

Mr. S. William Cochran, Attorney, United States Patent Office, with whom Mr. Joseph Schimmel, Solicitor, United States Patent Office, was on the brief, for appellant.

Mr. John A. Blair, Detroit, Mich., with whom Mr. John W. Malley, Washington, D.C., was on the brief, for appellees.

Page 763

Mr. William K. West, Jr., Memphis, Tenn., also entered an appearance for appellees.

Before BAZELON, Chief Judge, and WRIGHT and TAMM, Circuit judges.

TAMM, Circuit Judge.

This case concerns a question of procedure in the Patent Office. After applying for a patent, appellee Ebbert received from the Patent Office a notice of allowance, dated April 21, 1966. It was captioned 'NOTICE OF ALLOWANCE AND ISSUE FEE DUE, ' and among other things stated: 'With the allowance of the application, the above indicated Issue Fee becomes due and payment must be made within three months of the date of this Notice or the Patent will become abandoned (forfeited).' Joint Appendix at 54. The issue fee was not paid within three months because of a clerical error on the part of appellees' counsel. On February 10, 1967, appellees tendered the fee, but appellant Commissioner of Patents rejected the tender on the ground that he had no authority to accept the fee after October 21, 1966, id est, more than an additional three months after the due date of July 21, 1966, set in the notice of allowance. The Patent Office practice had been-- and is now-- to send applicants a 'NOTICE OF FORFEITED APPLICATION' when the issue fee was not paid within the initial three month period after issuance of the notice of allowance. However the practice was suspended from August 4, 1966 until March 1, 1967, as a result of an unusually heavy workload, and no such notice was sent to appellees.

When they tendered the fee, appellees petitioned the Commissioner to revive the abandoned application. The Commissioner dismissed the petition and appellees brought suit in the District Court to set aside that dismissal. They also sought to compel revival, acceptance of the issue fee and issuance of a patent. Cross motions for summary judgment were made, appellees' motion was granted and this appeal was taken.

Two statutes, 35 U.S.C. § 133 (1964) and 35 U.S.C. § 151 (Supp. II, 1965-66), are involved. They provide:

§ 133. Time for prosecuting application

Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has...

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