Intellectual Property Directions

I’m not a junior high teacher but I bet the dog-ate-my-homework excuse, or some modern day equivalent (the computer crashed, my printer ran out of toner, etc.) is alive and well. And just as kids must learn to take responsibility for their actions (or lack thereof), so too companies and their patent attorneys must put systems in place to check on their compliance with deadlines. I’m sure FirstHealth of the Carolinas was quite surprised when they missed a deadline because of “the birth of counsel’s son”, among other excuses, and were denied a motion to reopen its testimony period in a trademark case.

While it may seem rather heartless on the part of the Trademark Trial and Appeal Board and the Court of Appeals to not consider this event “excusable neglect“, you have to see the broader circumstances. In what was a drawn out trademark dispute, FirstHealth requested and received a two-month extension of their testimony period, with a deadline of 1/31/04. Nearly a month after the deadline, on 2/26/04, FirstHealth filed their motion to reopen the testimony period, citing:

• the birth of counsel’s son,
• the significant amount of testimony that was taken,
• counsel’s time conflicts with unrelated matters, and
• a docketing error made by a new paralegal

In considering whether to accept the missed deadline as excusable, the TTAB attempts to be equitable,

“taking account of all relevant circumstances surrounding the party’s omission. These include . . . [1] the danger of prejudice to the [non-moving party], [2] the length of the delay and its potential impact on judicial proceedings, [3] the reason for the delay, including whether it was within the reasonable control of the movant, and [4] whether the movant acted in good faith.”

In particular, the TTAB places heavy emphasis on the third factor – whether the delay was within the reasonable control of the movant. The Board also noted that its interest in deterring delay due to “sloppy practice or inattention to deadlines” was relevant to the second factor and also “weighs heavily against a finding of excusable neglect“.

FirstHealth had already won the extension to 1/31/04 “to accommodate [FirstHealth’s] witness’ [sic] schedules and conflicts with counsels’ schedules.” and their “docketing error” excuse was questionable (they had referenced the 1/31/04 deadline in an earlier motion). Further, they provided no explanation why some other attorney at the firm could not have taken over (indeed, it would appear that the attorney’s family issues were being used for the “sympathy vote” since during the appeal to the CAFC FirstHealth also pointed to the hospitalization of counsel’s son as a reason for delay. That hospitalization did not occur until after the testimony period closed). From the perspective of the TTAB and the CAFC, FirstHealth’s failure to meeting the deadline was caused by factors well within its control.

So, when you are dealing with the PTO it pays to pay attention to your deadlines. As much as we’d like to rely on our attorneys to handle these matters for us, ultimately we have to take responsibility for the service providers we hire … or at least come up with a more original excuse than the paralegal ate our homework.

This entry was posted on Monday, February 9th, 2009 at 7:12 pm and is filed under Uncategorized. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.