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37 C.F.R. § 1.105 Permits PTO to Request Information Regarding Sales and Public Distribution of Claimed Plant Variety

January 03, 2005

Decision icon Decision

Last Month at the Federal Circuit - February 2005

Judges: Clevenger (author), Dyk, and Newman (dissenting)

In Star Fruits S.N.C. v. United States, No. 04-1160 (Fed. Cir. Jan. 3, 2005), the Federal Circuit affirmed a district court’s judgment ruling that the PTO did not act unlawfully when it deemed the Plaintiff’s patent application abandoned for failing to respond to a requirement for information under 37 C.F.R. § 1.105.

Star Fruits S.N.C. and the Institute of Experimental Botany (collectively “Star Fruits”) filed a U.S. patent application directed to a variety of peach tree. The PTO then sought information regarding the sale or other public distribution of the claimed plant variety anywhere in the world under 37 C.F.R. § 1.105. Star Fruits declined to provide the required information on the ground that it was not material to the patentability of the new variety. The PTO viewed this response as a deliberate omission and issued a Notice of Abandonment. Star Fruits petitioned the Director for reconsideration but the Director denied the petition and reset the time period for Star Fruits to respond to the initial requirement for the information. Star Fruits requested reconsideration, and on further consideration, the PTO again confirmed that the application was deemed abandoned. Star Fruits then sued in the district court but the district court agreed with the PTO.

The Federal Circuit ruled that so long as the request from the Examiner for information is not arbitrary or capricious, the applicant cannot impede the Examiner’s performance of his duty by refusing to comply with an information requirement that comes from the Examiner’s view of the scope of the law to be applied to the application at hand. The Court specifically noted, however, that this decision should not be read as affirming a holding that no APA is possible after a requirement for information under § 1.105. There may be some cases where the PTO might abuse its discretion or behave arbitrarily or capriciously in connection with such an information requirement.