Reago v. United States Patent and Trademark Office

Filing 42

MEMORANDUM OPINION re: 33 MOTION to Dismiss by United States Patent and Trademark Office. (See Memorandum Opinion For Details). Signed by District Judge Claude M. Hilton on 3/16/11. (nhall)

-TRJ Reago v. United States Patent and Trademark Office

Doc. 42

IN THE

UNITED

STATES

DISTRICT

COURT

FOR THE

EASTERN DISTRICT

OF VIRGINIA

Alexandria Division

MAR I 6
TIMOTHY PAUL REAGO,
CI
.,i / Li .

Plaintiff,
v.

Civil Action No.01:10-cv-1072
STATES PATENT &

UNITED

TRADEMARK OFFICE,
Defendant.

MEMORANDUM

OPINION

This

matter

comes

before

the

Court on Defendant

United

States Patent and Trademark Office's

("PTO")

Motion to Dismiss.

On July 12, 2010, Plaintiff Timothy Paul Reago attempted to
file with the PTO a provisional patent application pursuant to 35 U.S.C. § 111(b). The application consisted of 1,274 pages,

which disclosed a purported invention entitled "Human Targeted Electromagnetic Broadcast: Security Considerations and Related Plaintiff identified

Arrangements, Methods and Processes."

himself as the inventor and remitted $110 in application fees.

On August 4, 2010, the PTO informed Plaintiff that he must remit
$3,240 in fees for the 1,174 pages in excess of the 100-page
limit for a small entity's patent application. See 35 U.S.C. §

41(a)(1)(G); 37 C.F.R.

§ 1.16 (s)

(providing that patent

applicants are charged $270 for each additional fifty pages of

Dockets.Justia.com

their application that exceeds 100 pages); see also 35 U.S.C. 41(h)(1) (reducing by 50% the application fees for small

§

entities); 37 C.F.R.

§ 1.27(a)(1)

(defining a small entity as

"any inventor of other individual . . . who has not assigned, granted, conveyed, or licensed . . . any rights in the
invention"). That notice explained that Plaintiff had two
months--unless he petitioned the PTO for an extension of time,

see 37 C.F.R.

§ 1.136(a)(1)--to remit the necessary fees.

Nevertheless,

the PTO granted Plaintiff a filing date of July

12, 2010 (the date Plaintiff filed his application) and assigned Serial No. 61/344,384 to his provisional application. Plaintiff wrote to the PTO to request a waiver of the additional small entity fee identified in the PTO's notice.
Plaintiff noted that he had limited income and that the amount

that the PTO's notice required him to remit would constitute a

significant portion of his annual income. In response to Plaintiff's request, the PTO informed Plaintiff that his request
but that it was

had been entered into his application file,

unable to proceed with the application until Plaintiff remitted the proper fees. The PTO again reminded Plaintiff that he could request extensions of time within which to remit the necessary
fees, but that without a timely and complete response (with the
his application would ultimately be

remission of fees),

considered abandoned.

Plaintiff has not yet remitted the necessary fees and has
not requested any extensions of time to do so. Nevertheless, the

PTO has yet to consider Plaintiff's application abandoned. His
application therefore remains pending before the PTO.
Plaintiff filed his pro se complaint with this Court on

September 24, 2010, appearing to seek a waiver of the PTO's fee

requirement because he is indigent. Defendant now moves to
dismiss, arguing that 1) this Court lacks subject matter

jurisdiction to consider Plaintiff's complaint, and 2) even if
this Court had subject matter jurisdiction, patent fees are not
waivable.

Regarding Defendant's first argument,

the PTO has yet to

issue any final decision on Plaintiff's patent application.
Under the Administrative Procedure Act, this Court may only

review the PTO's consideration of Plaintiff's application if the PTO has rendered a final agency action. See 5 U.S.C.
704.

§§ 702,

In order for the PTO's consideration of Plaintiff's

application to constitute a final agency action, two conditions
must be met:

First,

the action must mark the consummation of the

agency's decisionmaking process--it must not be of a merely tentative or interlocutory nature. And second,
the action must be one by which rights or obligations have been determined, or from which legal consequences
will flow.

Bennett v. Spear, 520 U.S.

154, 177-78 (1997)

(quotations

omitted). Neither requirement is met in this case.

The PTO has not taken any action regarding Plaintiff's
provisional application, let alone any action that would cause Plaintiff to lose any patent rights or to face legal consequences. Plaintiff seems to fear that the PTO considers his

provisional patent application abandoned. But the PTO has not
entered a notice of abandonment regarding Plaintiff's application. His application will remain pending until the time

within which Plaintiff can seek extensions of time has expired,
see 37 C.F.R. pending, § 1.136(a)(1). Because his application remains

this case does not satisfy the second condition

outlined in Bennett.

Regarding the first condition, the agency has yet to issue
any decision regarding Plaintiff's position that the
Constitution mandates a waiver of fees associated with his

provisional patent application because he is indigent. The PTO's

regulations dictate that Plaintiff must administratively request

such relief, and Plaintiff may only make such a request if and
when the PTO enters a notice of abandonment regarding

Plaintiff's application. Once a notice of abandonment is
entered, Plaintiff may file a petition with the PTO that
articulates his constitutional theory and thus seek to "invoke

the supervisory authority of the [PTO] Director." 37 C.F.R.

§

1.181(a)(3). If and when Plaintiff files a petition, PTO officials can then review the merits of Plaintiff's argument and
render a written decision. It is that written decision that will

constitute a final agency action, thereby enabling this Court's
review under the APA.

For these reasons,

this Court lacks subject matter

jurisdiction to hear Plaintiff's complaint and need not reach
Defendant's second argument that patent fees are not waivable.

Plaintiff's Complaint must be dismissed.

An appropriate order shall issue.

M.
Claude M. Hilton

United States District Judge

Alexandria, Virginia March /(o , 2011