In JAPANESE FOUNDATION FOR CANCER RESEARCH v. LEE, Appeal Nos. 2013-1678 and 2014-1014, the Federal Circuit reversed the district court’s grant of summary judgment that the PTO acted arbitrarily and capriciously and abused its discretion when it refused to withdraw a terminal disclaimer.
The Japanese Foundation for Cancer Research filed a petition to withdraw a statutory disclaimer, arguing it was filed due to mistaken communications between the client, foreign associate, and U.S. attorneys. The PTO denied the petition. The Foundation thereafter filed an action in district court appealing the PTO’s decision under the Administrative Procedure Act (“APA”), 5 U.S.C. § 551. The district court granted summary judgment directing the PTO to withdraw the disclaimer.
On appeal, the Federal Circuit reversed on two grounds. First, the Federal Circuit found the Foundation’s filing due to miscommunication could not be a “clerical or typographical error” under in 35 U.S.C. § 255, in which relief of correction or withdrawal could be granted. The Federal Circuit explained the statute applied to “simple mistakes such as obvious misspellings that are immediately apparent.” In addition, § 255 only grants relief due to an error appearing on the face of the document, not to the filing of the document itself. Second, the Federal Circuit explained it could only set aside an agency decision under the arbitrary and capricious standard of the APA if the agency abused its discretion by applying an erroneous interpretation of the law. The PTO’s determination was based on whether the disclaimer satisfied M.P.E.P. requirements. Furthermore, the PTO had discretion to deny the petition because the PTO is not the forum for resolving miscommunications between attorneys and clients. Therefore, the Federal Circuit concluded it must defer to the agency’s interpretation of its own procedures and regulations.