Japanese Found. for Cancer Research v. Lee
Addressing for the first time the issue of whether a terminal
disclaimer filed without the client's actual authority can be
withdrawn, the U.S. Court of Appeals for the Federal Circuit
reversed the district court's ruling that the Patent and
Trademark Office had acted arbitrarily and capriciously in refusing
to withdraw a terminal disclaimer. Japanese Found. for
Cancer Research v. Lee, Case Nos. 13-1678, 14-1014 (Fed. Cir.,
Dec. 9, 2014) (Prost, C.J.).
Counsel for the Japanese Foundation for Cancer Research (the
Foundation) filed a terminal disclaimer, stemming from a
miscommunication between a Japanese licensee, the licensee's
Japanese patent counsel and the Foundation's attorney of
record, a U.S. law firm. The licensee's in-house counsel had
earlier contacted a paralegal who worked with their Japanese patent
counsel to inquire as to whether a patent may be disclaimed before
it lapsed because of non-payment of
