Interference No. 103,950
In the event a party seeks judicial review of our
decision on Tsuruta’s preliminary Motion 5, the parties should
notify the General Counsel of the USPTO so that the Director
can determine whether it would be appropriate to intervene or
participate as an amicus for the purpose of defending the
policy set out in § 804.02 of the MPEP.
In view of the foregoing, Tsuruta’s preliminary Motion
No. 5 is denied.
Tsuruta’s Preliminary Motion No. 6
In preliminary Motion No. 6, Tsuruta requests judgment
that certain of Nardella claims are not patentable to
Nardella. Tsuruta argues that since Nardella claims 38
through 42 are not patentable to Nardella, as is argued in
Tsuruta’s Motion No. 5 above, Nardella’s claims 35 through 36
are likewise unpatentable because these claims cover the same
force for 20 years. Thus, it is possible for a patentee (1) to disclaim a patent before
the first maintenance fee is due, (2) keep a continuation pending before the USPTO and
(3) issue the continuation as a second patent (which would have a shorter patent life)
having the same claims as the disclaimed patent, all after an invention becomes
commercially significant. The patentee could end up paying the cheaper first and second
maintenance fees instead of all three maintenance fees required by law. Whether our
maintenance fee observation might cause the USPTO to re-think the § 804.02 policy is not
an issue before us. We will note that, in this case, Nardella did not disclaim all 29
claims in its patent, just claims 1-3, 5 and 9. Hence, if Nardella wants to keep its
patent viable for the entire term authorized by law, it will have to pay all maintenance
fees required by law.
-30-
Page: Previous 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 Next
Last modified: November 3, 2007