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October 23, 2007

Wasuri Mono

Chrishan Samuel hired Townsend and Townsend to prosecute his patent. On May 20, 2005, Townsend employee Mr. R took the BART train to go to the post office to file Samuel's application; he promptly fell asleep on the train, but awoke just before his stop. Groggy, he left his bag with the application on the train. Samuel found out the next day, and the papers were filed on May 21. Samuel petitioned the USPTO to waive 37 CFR §1.10, to get the filing date wound back a day.

The PTO said no. Twice. [final ruling]

In order to submit a grantable petition under 37 CFR §1.183, Petitioner must show (1) that this is an extraordinary situation where (2) justice requires waiver of the rule. In re Sivertz, 227 U.S.P.Q. 255, 256 (Comm'r Pat. 1985). Petitioner has not established that either condition exists in this case.

Petitioner admits that accidents which could have been prevented by the exercise of ordinary care or diligence do not give rise to extraordinary situations, and that a party's inadvertent failure to comply with Office rules does not rise to the level of an extraordinary situation.

Samuel tried to pin the blame on Mr. R's panic attack upon realizing the abandoned papers.

With this second renewed petition, Petitioner has set forth that "Mr. R's inability to deliver the application was a direct result of his mental illness: an extraordinary situation."

Petitioner's assertion misses the point. It was the inattentiveness of his courier that resulted in the loss of the bag. Had his courier stayed awake, and not left his bag on the train, the bag would not have been lost. The loss of the bag is what resulted in the failure to deposit this application with the USPS in a timely manner, and not any event which occurred subsequent thereto. Therefore, even if the Office were to accept Petitioner's assertion that the courier suffered an acute panic attack .which impaired his ability to think in a rational manner, this does not change the fact that the courier appears to have been of sound mind and clear judgment at the time of his dispossession of the application. In summary, Petitioner has asserted that the courier suffered a mental impairment, however this disability occurred subsequent to the courier's loss of the present application. But for the failure of Petitioner's agent to remember to take his bag with him when he exited the train, the application would have been timely filed.

Not to worry, Mr. S. The USA is the only country on this planet to have a first-to-invent regime, not first-to-file; that will cover for Mr. R's groggy mishap. By sworn affidavit, you can get your day back, and then some.

"Wasuri mono" is the ubiquitous Japanese phrase for "forgotten thing;" English has no such everyday equivalent.

Posted by Patent Hawk at October 23, 2007 5:36 PM | Prosecution


A swear-back would work if the inventors reduced it to practice before the date of an applied reference. Otherwise, I would bet the PTO likely will raise lack of dilligence in the timeline based on this decision. One day was enough in at least one instance, but maybe they will start counting minutes/seconds on this one.

Unless you have complete trust in the filer, always have someone verify before you go to bed.

Posted by: nightmare at October 23, 2007 7:07 PM

Sounds to me like a statutory bar problem, not a priority problem. Ain't no swear-back gonna' help 'em if the dude fell asleep on the anniversary of their public disclosure. They may have lost rights world-wide.

Posted by: BabelBoy at October 24, 2007 8:43 AM

Maybe next time they should use the Pony Express or some other outdated form of communication. Or they could simply file electronically.

Posted by: Steve Sereboff at October 24, 2007 12:23 PM

Mr. R is the new poster child for electronic filing.

Posted by: Steve Sereboff at October 24, 2007 12:36 PM