The Holidays That Keep on Giving: The USPTO Can Declare Its Own Holidays With no Real Notice

by Joshua B. Goldberg (Nath, Goldberg & Meyer – USA)

The USPTO experienced a massive power failure on December 22, 2015, resulting in a cascading sequence of subsequent computer failures that left its electronic filing system completely unusable and inoperable. Rather than take some other action, the USPTO made the decision to consider those days from December 22, 2015 until December 24, 2015, after which the electronic filing system was again available, as “Federal holiday[s] within the District of Colombia”, thus extending any deadlines falling on those days as provided for under US laws and regulations. In its statement, the USPTO declared:

As a result, “[a]ny action or fee due on these days will be considered as timely for the purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059, 1062(b), 1063, 1064, and 1126(d), or 35 U.S.C. §§ 119, 120, 133, and 151, if the action is taken, or the fee paid, on the next succeeding business day on which the USPTO is open (37 C.F.R. §§ 1.7(a) and 2.196).”

This all came about despite all other procedures for submitting filings to the USPTO remaining available over the December 22-24 time period, for example, hand carrying to the USPTO mailroom, sending filings via certified mail, sending documents via facsimile, etc.

Elm 3DS Innovations LLC (“Elm”) challenged the USPTO’s authority to declare that a day was a “Federal holiday within the District of Colombia” when that day was not treated as such by any other Federal agency. In this regard, Elm asserted that only Congress can declare a “Federal holiday within the District of Colombia.” Further, Elm asserted it was harmed by these “holidays” because the PTAB accepted IPR petitions filed against its patents on December 28, 2015, even though the statutory deadline for the petitions expired December 24, 2015.

In denying Elm’s suit and granting the USPTO’s motion to dismiss, the District Court gave three main reasons in support of its decision:

  1. The IPR statute (35 USC 314 § (d)) precludes judicial review of “any direct challenge to the institution of the IPR proceedings.”
  2. The declaration of holidays was not a “final agency action” reviewable under the APA (Administrative Procedures Act), because it is “[a] merely procedural rule, which does not impose harm.”
  3. Elm has an alternative remedy via appeal to the Federal Circuit once there has been a final decision in the IPR proceedings.

Per the District Court, none of Elm’s alleged injuries were “concrete and immediately felt” when the holidays were declared, but rather were “contingent on events independent of [the holiday] actions,” specifically, those of the IPR petitioners and the PTAB. The District Court also indicated the USPTO’s imposition of these “holidays” did not expand the substantive rights of the IPR petition filers. That is, because of the “holidays” petitioners could file their petitions electronically on December 28 instead of having to request permission to file by mail by December 24, but the substantive IPR requirements were not affected.

Where does this leave us now? Can the USPTO arbitrarily turn any day into a “holiday”, thereby potentially greatly impacting patent certainty and imposing certain restrictions on a patentee’s rights? If Elm’s patents are invalidated in the IPR proceedings, it may again raise its claim against these “holidays” in an appeal to the Federal Circuit. If so, it will then be up to the Federal Circuit to review this USPTO action, or to decide that the action is unreviewable under the IPR statute and/or the APA. If the Federal Circuit renders a decision under the IPR statute, that could leave open the door for challenge by others, for example, a party accused of infringement of a patent that would be invalid but for the additional grace period provided by the “holidays.”