No Challenge Possible to PTO’s Revival of Application

In Exela Pharma Sciences, LLC v. Lee, [2013-1206] (March 26, 2015) the Federal Circuit affirmed the dismissal of Exela’s challenge to the revival of SCR Pharmatop patent application that resulted in the issuance of U.S. Patent No. 6,992,218. It was undisputed that SCR Pharmatop failed to properly enter the U.S. National Phase by the 30 month deadline. SCR Pharmatop filed a petition to revive the application, stating that the delay was “unintentional,” using the form provided by the PTO for revival requests. The PTO granted the petition on April 25, 2003, and the application was duly examined, resulting in the ’218 patent. After being sued on the patent, Exela filed a petition in the PTO, under the APA and 37 C.F.R. §§1.181, 1.182, and 1.183, challenging the PTO’s revival of SCR Pharmatop’s application, arguing that “unintentional” delay was not an available ground for revival of a U.S. patent application claiming priority under the PCT-implementing statute as then in effect.  The PTO declined to consider Exela’s petition, stating that no statute or regulation authorizes third party challenge to a PTO ruling concerning revival of a patent application.  Exela brought an action in district court to review this determination, but it was dismissed the action as untimely.  The Federal Circuit affirmed the dismissal, but on the grounds that “PTO revival actions are not subject to third party challenge under the APA.”

This decision in effect completely insulates improper and even illegal action by the USPTO, not only can a third party not challenge the action in the Patent Office, but in view of the Federal Circuit’s decision in Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir. 2008), the party cannot raise it as a defense in an infringement action.