Virginia Lawyers Weekly

Here’s a nightmare that would haunt any lawyer. But for a West Coast law firm, it was a scenario that was all too real. A courier, entrusted with a document that had to get there in time, fell asleep on a train, misplaced the document, went into a panic and failed to tell the firm in time to correct the problem.

So the patent application that an Australian medical research institute said had to be filed May 20, 2005, missed that filing date by less 24 hours.

Lead plaintiff Howard Florey Institute is a “world-renowned Australian medical research institute” in Parkville, Victoria, according to its complaint in Howard Florey Institute v. Dudas (VLW 008-3-267).

After business hours on May 19, 2005, HFI’s stateside patent firm in San Francisco received “an urgent e-mail order letter” from HFI’s Australian patent attorney, with instructions that the attached patent application be filed on May 20, 2005.

On May 20, the San Francisco firm prepared the patent application and dispatched it via courier for U.S. Postal Service Express Mail delivery to the U.S. Patent and Trademark Office in Alexandria. Under PTO regulations, correspondence delivered by Express Mail is deemed filed with the PTO on the date of deposit with the Postal Service.

The courier, a “Mr. R,” left the firm at 5:55 p.m. and boarded a Bay Area Rapid Transit train for a postal branch that stayed open till midnight.

But the courier dozed off, waking just as he heard the conductor announce his stop.

Mr. R became distracted and left the train without the Express Mail documents – and without his keys, wallet and cell phone.

According to the July 7 decision in Dudas, Mr. R said he walked for miles from one BART station to the next hoping to find his bag. He later walked to the home of a friend who had a spare key to his house and who drove Mr. R home after midnight.

Mr. R’s bag turned up at the BART lost-and-found booth at 7:30 a.m. on May 21. The patent application was reclaimed, re-dated and filed one hour after the post office opened for business on May 21.

On June 22, 2005, a psychologist diagnosed Mr. R as having suffered “an acute panic attack” on May 20 that impaired his thinking and reasoning.

Research institute lawyers, including lawyers at Virginia’s Kaufman & Canoles, have tried for two years to persuade the U.S. Patent and Trademark Office to recognize the courier’s documented panic attack as an “extraordinary situation” that justified a waiver of the rules that produced the result.

Saying there was nothing extraordinary about a courier falling asleep and leaving his belongings on a train, the PTO twice rejected HFI’s petitions seeking a waiver of 37 C.F.R. § 1.10 to allow the applicant a filing date of May 20.

The applicants got a sympathetic hearing in the U.S. District Court in Alexandria.

But they won only a moral victory.

U.S. District Judge Liam O’Grady said the PTO abused its discretion when it failed to recognize the courier’s acute panic attack was an “extraordinary situation” under PTO regulations and that justice would require waiver of the rule in this case.

The law did not.

Alternatively, the PTO had ruled that it could not waive the requirement of the statute, 35 U.S.C. §§ 111(a) and 21(a), that controlled the date the agency could consider a patent application filed.

O’Grady said the “harsh result reached” in this case was mandated by the language of the statutes and regulations, and that no executive branch agency could act in derogation of a federal law.

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