"The Nesarikars' complaint inadequately alleges their Article III standing to sue, so dismissal was warranted."
"When submitting that application, the Nesarikars certified that they qualified as a "micro entity" under 35 U.S.C. § 123, a status that, at the time, entitled qualifying applicants to an 80% reduction in certain filing fees. Micro-entity status is available only to applicants who have not been named as inventors on more than four previously filed patent applications. However, applicants are not counted against that threshold for applications they were obligated to assign due to prior employment."
"The USPTO notified the Nesarikars in April 2024 that their micro-entity certification appeared erroneous because they were named on at least five earlier applications. In response, the Nesarikars invoked the employment-based assignment exception, asserting they had been obligated to assign rights in earlier applications, as well as the '288 application itself, as a result of prior employment. Despite multiple follow-up requests from the USPTO over several months, the Nesarikars did not produce the actual assignment agreement, any contractual language, or any other supporting evidence."
"The CAFC found that the inventors failed to adequately plead Article III standing, as their own representations to the USPTO undermined any claim of ownership in the disputed application."
Three inventors filed a pro se lawsuit after the USPTO refused reduced filing fees for their patent application. They had certified micro-entity status under 35 U.S.C. § 123, which provides an 80% fee reduction for qualifying applicants. The USPTO later notified them that their certification appeared erroneous because they were named on at least five earlier patent applications. The inventors responded by invoking an employment-based assignment exception, claiming they were obligated to assign rights from prior employment, including rights related to the earlier applications and the new application. The USPTO requested supporting proof, but the inventors did not provide an assignment agreement, contractual language, or other evidence. The USPTO refused to accept their representations and dismissed the application’s examination pending payment. The Federal Circuit affirmed dismissal for inadequate Article III standing.
Read at IPWatchdog.com | Patents & Intellectual Property Law
Unable to calculate read time
Collection
[
|
...
]