The United States District Court for the District of Delaware recently ruled on the issue of whether a bounced check for the issuance of a patent could constitute abandonment of the patent. In this patent infringement action, defendants moved to dismiss for lack of subject matter jurisdiction as a result of the bounced check. The district court denied the motion.

It was undisputed that during the prosecution of the patent, that the applicants original check to cover the issue fee bounced, which led to the patent office notifying the applicants of the payment deficiency and seeking withdrawal of the patent from issuance. As a result, defendants contended that the patent was abandoned under 35 U.S.C. § 151 for failure to timely pay the required issue fee. Plaintiff's contended that the bounced check was properly resolved with the USPTO and that the Patent Office never officially withdrew the patent from issuance. Plaintiffs also noted that the Patent Office accepted payment of all required maintenance fees for several years.

The district court rejected the defendants' argument finding that based on a preponderance of the evidence the plaintiffs established that the issue fee was paid and therefore the patent was not abandoned. The district court found it significant that the patent was not withdrawn from issuance and that the Patent Office accepted all of the required maintenance fees during the term of the patent. Although there was no direct evidence that the issue payment was made, the district court found that the Patent Office's failure to revoke the issuance of the patent and the acceptance of the maintenance fees was sufficient circumstantial evidence to infer that the issue fee payment was satisfactorily resolved in the eyes of the Patent Office.

Thus, even though there was no direct evidence of proof of payment from either the plaintiffs or the Patent Office, the district court denied the motion to dismiss based on lack of subject matter jurisdiction because there was circumstantial evidence that the payment was made.

Ateliers de la Haute-Garonne v. Broetje Automation-USA Inc., Case No. 09-598-LPS (D. Del. )