Fleming v. Coward: Pro Se Reminder…Examiner Findings Don't Get Appealed to District Court

Category: Administrative Law  
By: Jesus Hernandez, Blog Editor/Contributor 
TitleFleming v. Coward, No. 2013-1091 (Fed. Cir. Aug. 12, 2013) (per curiam) [NON-PRECEDENTIAL].
Issue"[T]he PTO defendants [who are patent examiners] argued that the district court lacked jurisdiction over the case because [Applicant] had failed to exhaust his administrative remedies in the PTO." Fleming, at *4.
Holding"The district court was correct to dismiss the complaint against the PTO defendants because of Mr. Fleming’s lack of action in the PTO prior to instituting a civil lawsuit arising from the rejection of his patent application." Fleming, at *6.

Procedural History"After a final rejection, on November 29, 2011, examiner Williams sent Mr. Fleming a document entitled “Advisory Action Before the Filing of an Appeal Brief” (“Advisory Action”). […] Instead [of filing proper documents (an RCE, Notice of Appeal, etc.)], on December 13, 2011, Mr. Fleming amended a complaint to add Messrs. Williams and Assouad as defendants (together, the “PTO defendants”) to a case he had filed two months earlier. […] On August 2, 2012, the district court [of DC] granted the motion to dismiss for lack of jurisdiction because Mr. Fleming had failed to exhaust his administrative remedies with respect to his patent application." Fleming, at *3-4.

Legal Reasoning (RADER, Chief Judge, LOURIE, and PROST)
Standard"Under 35 U.S.C. §141, a patent applicant who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board (“Board”) under 35 U.S.C. § 134(a) may appeal the Board’s decision directly to the Federal Circuit. Alternately, the dissatisfied patent applicant may choose to “have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia.” 35 U.S.C. § 145. To the extent that these statutory review provisions are inadequate, an action against the PTO may be brought under the Administrative Procedure Act if the patent applicant demonstrates receipt of a “final agency action” under 5 U.S.C. § 704." Fleming, at *5.
Exhaustion of Remedies"Notably, the prerequisite to requesting judicial review under all three statutory provisions is the exhaustion of remedies before the PTO by procuring a 'decision from the Board' or 'final agency action.'" Fleming, at *6.
Applicant did not Exhaust Remedies"The district court also correctly found that Mr. Fleming “has not exhausted his administrative remedies with regard to his patent application.” District Court Decision, at *2. Mr. Fleming had neither obtained a “decision from the Board” nor “final agency action,” because he did not “appeal from the decision of the primary examiner to the . . . Board” under 35 U.S.C. § 134(a) upon receipt of the Advisory Action. The unrefuted affidavit submitted by the PTO defendants establishes that Mr. Fleming did not pursue any of the options presented to him in the Advisory Action: (1) file an amendment, affidavit, or other evidence, which would place his patent application in condition for allowance; (2) file a Request for Continued Examination; or (3) request an extension of time to respond." Fleming, at *6.
"Because the district court correctly found that Mr. Fleming has failed to exhaust his administrative remedies in the U.S. Patent and Trademark Office prior to filing suit, we affirm." Fleming, at *1.


Image Attribution Statement: George Hodan, "Cry," available as Public Domain via PublicDomainPictures.net, http://www.publicdomainpictures.net/view-image.php?image=25728&picture=cry (Last visited Sept. 20, 2013).  

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