3premise that an issue fee discrepancy will only be a problem if it exists on the date the patentissues. As explained previously (Director’s S.J. Mem. at 11, 15, 24), 35 U.S.C. § 151 requiresthat any “remaining balance of the issue fee shall be paid within three months of the sending of anotice thereof,” and provides that “if not paid, the patent shall lapse.” 35 U.S.C. § 151. Dr.Portman’s chargeback created a “remaining balance,” and the inventors’ failure to respond to theJune 7, 2004, Notice caused the patent to lapse.
But the significance of Dr. Portman’s chargeback request is not limited to the issue feedeficiency it created. It also raised questions about the inventors’ previous assertions that theprior abandonment had been unintentional. Portman’s attempt to obtain a refund of the moneythat was intended to cover the issue fee of the patent could well have reflected an intention thatthe patentThe fact that the issue fee remained unpaidafter notice to the inventors gave the USPTO ample basis for voiding the patent and returning theinventors to applicant status.not
Contrary to Mr. Schmirler’s implication (Schmirler Reply Mem. at 3), the Director’sstatement that “as a result of Dr. Portman’s chargeback . . . , the issue fee had never been paid”was not meant to suggest that the issue fee had not been paid at one time. Rather, as Mr.Schmirler acknowledges, the USPTO does not deny that the issue fee was paid. Schmirler ReplyMem. at 3. The USPTO’s point is merely that the chargeback left the fee unpaid, as if it hadnever been paid.issue, and thus gave rise to the inference that the abandonment may not have beenunintentional after all. If that were the case, then the USPTO should not have revived theunderlying application in the first place. In light of this new information regarding the inventors’intent, the USPTO withdrew its decision granting the revival request, thereby undercutting thepatent on a ground independent of the issue fee deficiency. The inventors’ failure to respond tothe USPTO’s June 7, 2004, Notice with an explanation of the chargeback provided anindependent ground for the USPTO to vacate the patent, and thereby restore the inventors to the
Case 2:10-cv-00144-LA Filed 06/21/11 Page 3 of 10 Document 26