Japanese Foundation for Cancer Research v. Lee, __ F.3d __ (Fed. Cir, Dec. 9, 2014) (PROST, Dyk, Taranto) (E.D. Va.: Trenga) (1 of 5 stars)

Federal Circuit reverses summary judgment directing the PTO to withdraw a terminal disclaimer.  The plaintiff filed the disclaimer on its issued patent, but then petitioned to withdraw it because of a misunderstanding between a foreign paralegal and U.S. counsel.  The PTO denied the petition, precipitating this APA suit, in which the district court found the denial improper and the Federal Circuit found it proper. 

First, a certificate of correction could not cure the alleged mistake.  While PTO policy and case law allows for replacing disclaimers that contain typos with new disclaimers, the actual filing itself, which requires attorney action and judgment, is not “clerical or typographical error” under section 255.

Second, the PTO’s refusal to use its inherent authority to withdraw the disclaimer was not arbitrary and capricious.  That the PTO had not published the disclaimer in the Federal Register when the patentee filed its petition was not relevant, and the public could see the disclaimer in PAIR in any event (even if it could also see the unacted-on petition).  The PTO also was not required here to draw a precise line for the sorts of errors it would correct.  Instead, the PTO had discretion not to withdraw a disclaimer that satisfied the applicable regulations (e.g. was signed by the attorney of record).  The PTO found that the public might have relied on the disclaimer (which was posted on the Internet), and it was not required prove actual reliance.  Moreover, the PTO was permitted to assume the attorney of record spoke for the client, and was not required to delve into the record to resolve a subsequent dispute.