Outlier Patent Attorneys

Racing Optics’ Patent Survives Despite an Inventor Oath that was Filed Late



A judge in the District of Nevada rejected a defendant’s argument that Racing Optics’ U.S. Patent No. 8,974,620 was abandoned for failing to file an inventor oath before or with the payment of an issue fee.

Racing Optics develops lens-protection systems, including “tear-off” protectors for high-speed racing consisting of stacks of optically engineered laminated lenses applied to race car windshields, motorcycle goggles, and racing helmet visors. Once damaged, the top layer of the lens can be torn off to reveal a new, undamaged layer, providing a clear view. The claims of the ’620 patent are specifically directed to a “bubble-free” screen protector that avoids difficult-to-remove air bubbles created when applying conventional screen protectors by eliminating the full adhesive in the central area of the screen and spacing the protector away from the screen with an “air bearing.”

35 U.S.C. § 115(f) requires an inventor to file an oath no later than the date the issue fee was paid. Racing Optics’ oath was non-compliant because it was filed after the issue fee was paid. But the Court questioned whether Congress intended such a failure to invalidate a patent has been issued by the Patent Office.

In an effort to find an answer to the question of Congressional intent on abandonment, the Court found the “savings clause” under 35 U.S.C. § 115(h), which permits an applicant to “replace” or “otherwise correct” a statement governed by this section “at any time.” The Court concluded that Racing Optics was saved by this clause because it submitted an oath at a later date. In this case Racing Optics had filed a pre-AIA (America Invents Act) oath with an earlier application to which the ’620 patent claims priority. However, its later filed AIA complaint oath was a “correction” of the pre-AIA compliant oath. The Court found that “[A]ny time” within 35 U.S.C. § 115(h) “means the time for filing a correction is without limitation, so the savings clause permits corrected oaths to be filed either before or after the issue fee is paid.”

Racing Optics, Inc. v. Aevoe Corp., 2-15-cv-01774 (NVD August 2, 2016) (Jones, R.)