Dubost v. U.S. Patent and Trademark Office, 85-761

• Decision Date: 22 November 1985
• Docket Number: No. 85-761,85-761
• Parties: , 227 U.S.P.Q. 977 Dominique DUBOST, Appellant, v. U.S. PATENT AND TRADEMARK OFFICE, Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1561

777 F.2d 1561

54 USLW 2331, 227 U.S.P.Q. 977

Dominique DUBOST, Appellant, v. U.S. PATENT AND TRADEMARK OFFICE, Appellee.

Appeal No. 85-761.

United States Court of Appeals, Federal Circuit.

Nov. 22, 1985.

Marsha G. Gentner, Fleit, Jacobson, Cohn & Price, of Washington, D.C., argued for appellant. With her on brief was Martin Fleit, Washington, D.C.

Harris A. Pitlick, Associate Sol., U.S. Patent & Trademark Office, of Arlington, Va., argued for appellee. With him on brief were Joseph F. Nakamura, Sol. and John W. Dewhirst, Associate Sol., Washington, D.C.

Before NIES, PAULINE NEWMAN and BISSELL, Circuit Judges.

NIES, Circuit Judge.

Dominique Dubost appeals from the final decision of the United States District Court for the District of Columbia, reported at 225 USPQ 713 (D.D.C.1984), which sustained the decision of the Commissioner of Patents and Trademarks (PTO) denying a filing date of October 8, 1982 to his patent application. We vacate and remand.

Background

Counsel for Dominique Dubost delivered a patent application to the Patent and Trademark Office on October 8, 1982. Accompanying the application was a letter claiming priority under 35 U.S.C. Sec. 119 based upon a French application filed October 16, 1981. Because October 16, 1982 was a Saturday, Dubost had until October 18, 1982 to file his U.S. application and still obtain the benefit of his earlier French filing date.

Also accompanying the application was a self-addressed postcard which contained the statement "Fee of $150.00 paid by check" and which was intended to be date stamped by the PTO, marked with a serial number, and returned to Dubost's attorney to indicate that the materials had been received by the PTO on a particular date. The application was complete in all respects except that the check by applicant's counsel, otherwise properly made out in an amount sufficient to cover the filing fee, was unsigned. The postcard was date stamped October 8, 1982 and returned to counsel.

Subsequently, by letter dated October 20, 1982, the PTO informed Dubost's counsel that the application had been received on October 8, 1982, and given a serial number 433,463. The letter stated: "We are returning your check ... since it was received unsigned." Counsel immediately resubmitted a signed check along with a petition to the Commissioner under 37 C.F.R. Sec. 1.181 seeking the October 8 filing date.

In a decision dated December 29, 1982, the PTO denied Dubost's petition without reasons, and stated that "[t]he earliest filing date the application is entitled to is October 28, 1982, the date of receipt of the signed check."

Dubost next filed in the PTO a document entitled "Request for Reconsideration on Petition, Request for Waiver of Informality Under 35 U.S.C. Sec. 26 and Grant of Filing Date of October 8, 1982." Accompanying this document was an affidavit of Paul Fiess, an account officer for Dubost's counsel's bank. Fiess averred that the subject account is a "priority account." He averred further that, if an unsigned check drawn on that account were to reach the bank, he would telephone Mr. Steinberg or Mr. Raskin (Dubost's counsel) "and would accept their telephone authorization to pay the amount of said check."

In the Request for Reconsideration, counsel, pointing out the criticality of the filing date, argued that all efforts were made by the inventor to ensure timely filing and that the error was an inadvertency by their office manager, whose affidavit was submitted. It was further argued that the Commissioner waives the literal requirement of 35 U.S.C. Sec. 111 that the application be "accompanied by the fee required by law" whenever payment is made by check because actual payment on a check is not made until the check is deposited and the amount remitted by the applicant's bank. Thus, all checks are provisionally accepted. Further, the argument was made that the Commissioner should have exercised his discretion to waive the informality of the unsigned check under 35 U.S.C. Sec. 26.

On reconsideration, the Commissioner upheld the denial of Dubost's request for the earlier date. The opinion stated that the check was not negotiable in the form in which it was presented to the PTO, and could not have been cashed without further authorization from the firm. The Commissioner also concluded that he has no authority to waive the statutorily required filing fee. Dubost then filed suit in the U.S. District Court for the District of Columbia.

The district court held that it had jurisdiction pursuant only to 28 U.S.C. Sec. 1361, the mandamus statute, and that Dubost "has failed to demonstrate that a clear duty owed him was either unfulfilled or performed in an arbitrary or capricious manner." According to the district court, Sec. 111 contains no provision for a waiver of the patent application fee "required by law," and counsel's unsigned October 8 check cannot satisfy the Sec. 111 requirement, since it cannot invest the firm with any rights or liabilities. The court stated that, contrary to counsel's argument, the PTO is not permitted by 35 U.S.C. Sec. 26 to provisionally accept an unsigned check because that section "deals only with provisional acceptance of defectively executed oaths or declarations, not checks which are not executed at all." Since the PTO had a practice of returning unsigned checks, the court concluded that it was not arbitrary or capricious for the PTO to refuse to accept the check in this case. After rejecting each of the additional theories advanced by Dubost, the court granted the government's motion for summary judgment. Dubost then filed the present appeal.

Dubost argues, inter alia, that 35 U.S.C. Sec. 111 as interpreted by the Commissioner in 37 C.F.R. Sec. 1.23 ¹ in combination with 35 U.S.C. Sec. 26 ², authorizes the PTO to accept the firm's check as conditional payment, even though unsigned. Only if a check had, in fact, been dishonored after presentation to the bank, per Dubost, should the filing date have been denied. Alternatively, Dubost argues that the unsigned check is a document with a "defective execution" within Sec. 26.

The solicitor argues that the October 8, 1982 submission was not "accompanied by the fee" required by law and, therefore, is not entitled to that filing date. According to the solicitor, the PTO has no authority to waive the fee requirement, nor can it make loans or extend credit. Even if the PTO had authority to accept an unsigned check, the solicitor agrees with the district court's conclusion that failure to do so was not an abuse of discretion because of the PTO policy of returning unsigned checks.

The solicitor asserts that the district court properly declined to invoke Sec. 1.23 and Sec. 26 in Dubost's favor. According to the solicitor, the Sec. 1.23 phrase "in any other form" means conventional forms of payment, such as uncertified checks, which are not among those specifically designated. The solicitor concludes that an unsigned check is not a form of payment of money at all, and, thus, is not within the regulation.

The solicitor argues that Sec. 26 was only intended to apply to defectively executed oaths or declarations. Although not citing any authority which in positive terms states such a limitation, the solicitor relies on the fact that he could find no cases in which Sec. 26 was used for purposes other than correcting a defective oath or declaration, and on the fact that the legislative history contains nothing specifically approving Dubost's interpretation. Moreover, the solicitor argues, the language of Sec. 26 is discretionary, and in view of the PTO practice of returning unsigned checks, there was no abuse of discretion in doing so here.

Jurisdiction

28 U.S.C. Sec. 1295(a)(1) vests this court with jurisdiction over any appeal from a final decision of a district court, if the district court's jurisdiction was based in whole or in part on 28 U.S.C. Sec. 1338, with some exceptions not here applicable. 28 U.S.C. Sec. 1338(a) vests the district court with jurisdiction over "any civil action arising under any Act of Congress" relating to, among other matters, patents. See Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422, 1429, 223 USPQ 1074, 1079 (Fed.Cir.1984) (in banc). Hence, if the district court had "arising under" jurisdiction over the subject case, then the appeal from the district court's final decision is properly before this court. In resolving the question of our jurisdiction over this appeal, it is unimportant that neither party raises a challenge thereto, nor does it make any difference that the district court failed to articulate Sec. 1338(a) as a basis of its jurisdiction. This court must, in every appeal, assure itself that jurisdiction exists.

This court has stated that for jurisdiction of the district court to have been founded on Sec. 1338(a), "plaintiff must have asserted some right or interest under the patent laws, or at least some right or privilege that would be defeated by one or sustained by an opposite construction of those laws." Beghin-Say International, Inc. v. Ole-Bendt Rasmussen, 733 F.2d 1568, 1570, 221 USPQ 1121, 1123 (Fed.Cir.1984) (holding action did not arise under the patent laws), citing Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U.S. 282, 286, 22 S.Ct. 681, 682, 46 L.Ed. 910 (1902), wherein the Court reiterated its holding to the same effect in Pratt v. Paris Gas, Light & Coke Co., 168 U.S. 255, 259, 18 S.Ct. 62, 64, 42 L.Ed. 458 (1897). Thus, the jurisdiction issue in this case is whether Dubost asserted before the district court some right or privilege which would be defeated by one or sustained by an opposite construction of the patent laws.

In Atari, this court stated that "[a] claim arises under the particular statute which creates the cause of action." Id. 747 F.2d at 1429, 223 USPQ at 1079. That much is beyond dispute, and has been recognized at least as early as Mr. Justice Holmes' opinion in American...