Unpaid Maintenance Fees and the Dangers of a Patent Assignment: Burandt v. Dudas, 2008 U.S. App. LEXIS 12328 (Fed. Cir. June 10, 2008)

Unpaid Maintenance Fees and the Dangers of a Patent Assignment: Burandt v. Dudas, 2008 U.S. App. LEXIS 12328 (Fed. Cir. June 10, 2008)

An assignment can jeopardize a patent in the event the assignee fails to pay the maintenance fees required by the Patent Act. In Burandt v. Dudas, 2008 U.S. App. LEXIS 12328, Burandt assigned his patent to IRI, making IRI the legal title holder. But IRI, as the legal title holder, failed to pay the maintenance fees, and the patent expired. Seven years later, Burandt tried to reinstate his patent, arguing an unavoidable delay. In support of his argument, Burandt: (1) attempted to shift the focus to himself as equitable titleholder; and (2) claimed the delay was unavoidable because he’d suffered a mental disability. Burandt’s arguments were rejected under Ray v. Lehman, 1995 U.S. App. LEXIS 11300 (Fed. Cir. 1995), which holds that in determining whether a delay in paying a maintenance fee was unavoidable, one looks to whether the party responsible for payment of the maintenance fee exercised the due care of a reasonably prudent person. Here, IRI, as legal title holder, was responsible for paying the maintenance fee, and the record demonstrated that IRI failed to exercise reasonable care in ensuring that the fee was timely paid. Even if Burandt was considered the equitable owner, that status would not override the fact that IRI was the owner of record with the legal responsibility of paying the fees. Finally, the unfortunate facts surrounding Burandt's situation were irrelevant given IRI's status as the legal owner at the time the first fee was due.

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