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Commissioner for PatentsUnited States Patent and Trademark OPficeP.0. BOX1450Alexandria, VA 22313-1450w.ufipl0.wPaper No. 25WlEDMICHAEL T O B I A S1629 K ST NWSUITE 3 0 0WASHINGTON DC 2 0 0 0 6In re P a t e n t No. 6,477,964Issue Date: November 12, 2 0 0 2Application No. 09/418,259F i l e d : October 15, 1 9 9 9Attorney Docket N o . OOI/TYGARDAPR 1 8 2011OFFICE QF PEmtONSDECISION ON P E T I T I O NThis is a decision on the renewed petition u n d e r 37 CFR 1 . 3 7 8 ( b ) ,filed August 25, 2010, to a c c e p t t h e unavoidably d e l a y e d paymentof a maintenance fee for t h e above-identified patent.T h e petition is DENIED. This decision is a final agency a c t i o nw i t h i n the meaning of 5 U . S . C . § 7 0 4 f o r purposes of s e e k i n gj u d i c i a l review. See MPEP 1 0 0 2 . 0 2 .Procedural History:T h e above-identified p a t e n t i s s u e d on November 12, 2002.T h e first maintenance f e e c o u l d have been timely p a i d d u r i n gthe period from November 12, 2 0 0 5 through May 12, 2006, o rw i t h a late payment s u r c h a r g e during the period fromMay 1 3 , 2 0 0 6 t h r o u g h November 12, 2006.

Patent No. 6,477,964Page 2No maintenance fee was received, and as such, the patentexpired on November 13, 2006.The 2 year time period f o r filing a petition under 3 7 C.F.R.§ 1 . 3 7 8 ( c ) expired on November 13, 2008.Patentee filed a petition to accept t h e unavoidably delayedpayment of the maintenance fee under 37 C.F.R. 5 1.378(b) onMay 10, 2 0 1 0 .The petition was dismissed in a decision mailed onJune 25, 2010.Evidence Presented on P e t i t i o n and Renewed P e t i t i o n :Petitioner explains that assignee Tygard Machine andManufacturing Co. (hereinafter "Tygard Machine") had thefollowing system in p l a c e f o r payment of maintenance fees. WhenTygard Machine received a patent, their office manager wouldnotify Computer Patent Annuities (hereinafter "CPA") to add thep a t e n t to Tygard Machine's portfolio, such that CPA would trackthe deadlines for payment of the maintenance fees. When amaintenance fee became due, CPA would send Tygard Machine anotification. The office manager would then consult with thepresident of Tygard a c h i n e ,Ed Tygard, to determine whether themaintenance fee should be paid, and then to instruct CPAaccordingly. Tygard Machine would normally send the instructionsto CPA by fax, and would send the payment to CPA by mail.At the t i m e the instant patent issued on November 12, 2002, theoffice manager of Tygard Machine was Tom Clemmens. According toClemmens, he remembers receiving the instant letters patent(because it was the first time he had seen a ribboned copy of aU.S. patent), remembers consulting Ed Tygard concerning thepayment of the maintenance fee, and remembers receiving aninstruction from Tygard to notify CPA to add the patent to TygardMachine's portfolio. In addition, Clemmens remembers recordingthe need to contact CPA on his "office list" - a computer file oftasks he needed to perform. However, Clemmens does not have aspecific recollection of contacting CPA concerning t h e patent,but feels certain he d i d so, as he specifically remembers placingthat task on his office list, and if the task was not performed,it would have remained "unchecked" on his office list. AsClemmens feels certain that he called CPA to add the instantp a t e n t t o Tygard Machine's portfolio, "the failure to pay themaintenance fee for this patent could only be due to a mistake byCPA and was not the fault of Tygard Machine". Unfortunately,Tygard Machine no longer has any of the computers

P a t e n t No. 6,477,964Page3from the time when Clemmens was employed as an o f f i c e manager( 2 0 0 2 - 2004), so no records exist, including Clemmen's "officelist". No back-ups of f i l e s were kept.The fact that t h e maintenance fee was not paid was not discovereduntil January of 2010, shortly after Tygard Machine discoveredthat a competitor was manufacturing a similar device. Afterconducting a review of the f a c t s , Tygard Machine filed thepetition under 3 7 C.F.R. § 1.378(b) on May 10, 2010.Arcruments Presented on P e t i t i o n and R e n e w e d P e t i t i o n :Petitioner argues t h a t Tygard Machine took reasonable care toe n s u r e that t h e maintenance fee for t h e instant p a t e n t would betimely paid. Specifically, Clemmens was experienced, competent,and reliable, and had been properly t r a i n e d concerning dealingswith CPA. When the instant patent issued, Mr. Tygard instructedClemmens to contact CPA to arrange for payment of the maintenancefees. Clemmens recalls recording the need to contact CPA on hisoffice list. Furthermore, petitioner argues that as aprecaution, CPA was recorded as the maintenance fee address fort h e p a t e n t , y e t petitioner never heard from CPA concerning aMaintenance F e e Reminder. Petitioner was under t h e belief thatdoing such would act as a "safeguard", but latter learned fromCPA t h a t they would not c o n t a c t a patentee if a Maintenance FeeR e m i n d e r was received for a patent that was not in their system.In v i e w of t h e above, petitioner argues that it is "believed"that the failure to pay t h e maintenance fee was not the fault okTygard Machine, and was therefore unavoidable.Relevant S t a t u t e s , Rules and Regulations:35 U.S.C.§41(c) (1) states that:The Director may accept the payment of any maintenance feerequired by subsection (b) of this section which is madewithin twenty-four months after the six-month grace periodif t h e delay is shown to the satisfaction of the D i r e c t o r tohave been unintentional, or at any time after the six-monthgrace period if the delay is shown to t h e satisfaction ofthe Director to have been unavoidable. The Director mayrequire the payment of a surcharge as a condition ofaccepting payment of any maintenance fee a f t e r the six-monthgrace period. If the Director accepts payment of amaintenance fee a f t e r the six-month grace period, the patentshall be considered as not having expired at t h e end of thegrace period.

Page 4Patent No. 6,477,96437 C . F . R .5 1.378(b) provides that:Any petition to accept an unavoidably delayed payment of amaintenance fee must include:( 1 ) The required maintenance fee s e t f o r t h in §1.20(e)through ( g ) ;(2)The surcharge set forth in §1.20(i)(l); and( 3 ) A showing t h a t the delay was unavoidable sincereasonable caxe was taken to ensure that themaintenance fee would be paid timely and that thepetition was filed promptly after the patentee wasnotified of, or otherwise became aware of, theexpiration of the patent. The showing must enumeratethe steps taken to ensure timely payment of themaintenance f e e , t h e date and the m a n n e r in whichpatentee became aware of the expiration of t h e patent,and t h e s t e p s t a k e n to file the petition promptly.5 1.378(b)(3) is at issue in this case. Acceptance of a latemaintenance fee under the unavoidable delay standard isconsidered under the same standard for reviving an abandonedapplication under 35 U.S.C. 5 133. This is a very stringentstandard. Decisions on r e v i v i n g abandoned applications on thebasis of "unavoidable" delay have adopted the reasonably prudentperson standard in determining if the delay was unavoidable:. . .The word unavoidable1is applicable to ordinary humanaffairs, and requires no more or greater care or diligencethan is generally used and observed by prudent and carefulmen in relation to t h e i r most important business. It permitsthem in the exercise of t h i s care to rely upon the ordinaryand trustworthy agencies of mail and telegraph, worthy andreliable employees, and such other means andinstrumentalities as are usually employed in such importantbusiness. If unexpectedly, or through the unforeseen faultor imperfection of these agencies and instrumentalities,there occurs a failure, it may properly be said to beunavoidable, all other conditions of promptness in itsrectification being present. In re Mattullath, 38 App. D . C .4 9 7 , 514-15 (1912) (quoting Pratt, 1887 D e c . Commlr P a t . 31,32-33 (1887)); see also Winkler v . Ladd, 221 F. Supp. 550,5 5 2 , 1 3 8 USPQ 6 6 6 , 6 6 7 - 6 8 (D.D.C. 1963), a f f T d , 143 USPQ 172( D . C . Cir. 1963); Ex parte Henrich, 1913 Dec. Commtr P a t .

Patent No. 6,477,964Page 5In addition, decisions on r e v i v a l are made on a "case-by-casebasis, t a k i n g all the facts and circumstances into account."Smith v. Mossinghoff, 671 F.2d 5 3 3 , 538, 213 USPQ 977, 982 (D.C.C i r . 1982). Finally, a petition cannot be granted where apetitioner has failed to meet his or her burden of establishingthat the delay was "unavoidable." Haines v. Quigg, 673 F. Supp.314, 316-17, 5 USPQ2d 1130, 1131-32 ( N . D . Ind. 1987) .While the delay in payment of t h e maintenance fee may have beenunintentional, petitioner has failed to provide an adequateshowing that the delay was unavoidable. Here, it is apparentthat a breakdown in t h e system occurred. However, at issue iswhere the breakdown happened. Petitioner "believes" that thebreakdown occurred on the part of CPA. However, based on theevidence presented on petition, petitioner has not establishedThere is a probabilityconclusively that this was the case.that Clemmens failed to call CPA, as Clemmens has no recollectionof having done so. Furthermore, no computer records of Clemmen's"office list" exist, which would corroborate whether this taskwas performed.Regarding petitioner's argument concerning the Maintenance F e eReminder, it is settled that delay resulting from petitioner'slack of receipt of any maintenance fee reminder(s) does notconstitute tlunavoidablelldelay. See In re Patent No. 4,409,763,7 USPQ2d 1798, 1800 ( C o m m l rPat. 1988)), affld, Rydeen v. Quigq,748 F. Supp. 900, 16 USPQ2d 1876 (D.D.C. 1990), aff'd, 937 F.2d6 2 3 ( F e d . Cir. 1991)(table), cert. denied, 5 0 2 U.S. 1075 (1992).See also "Final Rules f o r Patent Maintenance Fees," 4 9 Fed. Reg.34716, 34722-23 (Aug. 31, 19841, reprinted in 1046 Off. Gaz. P a t .Office 28, 3 4 (September 2 5 , 1984). Under the statutes andregulations, the Office has no duty to notify patentee of t h erequirement to pay maintenance fees or to notify patentee whent h e maintenance fee is due. While the Office mails maintenancefee reminders strictly as a c o u r t e s y , it is solely theresponsibility of the patentee to ensure that the maintenance feeis timely paid to prevent expiration of the patent. The failureto receive the Reminder does not relieve t h e patentee of theobligation to t i m e l y pay the maintenance f e e , nor will itconstitute unavoidable delay if the patentee seeks reinstatementunder the regulation. Rydeen, 748 F. Supp at 9 0 5 .In determining whether a delay in paying a maintenance fee wasunavoidable, one looks to whether t h e p a r t y responsible forpayment of the maintenance fee exercised the due care of areasonably prudent person. Ray, 5 5 F.3d at 608-609, 3 4 USPQ2d at