Bullard v. the United States Patent and Trademark Office

Opinion

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FILED UNITED STATES DISTRICT COURT SEP - 2 2009 FOR THE DISTRICT OF COLUMBIA Clerk, U.S. District and Bankruptcy Courts

Christopher Bullard, ) ) Plaintiff, ) ) v. ) ) Civil Action No. 09 1670 The United States et al., ) ) Defendants. )

MEMORANDUM OPINION

This matter is before the Court on its initial review of plaintiffs pro se complaint, which

is accompanied by an application to proceed in forma pauperis. The Court will grant the

application and will dismiss the case for lack of subject matter jurisdiction, as required by Rule

12(h)(3) of the Federal Rules of Civil Procedure.

Plaintiff, a prisoner in North Carolina, alleges that on May 12,2009, he filed two non-

provisional patent applications with the Patent and Trademark Office ("PTO"), but the PTO

returned them on June 1,2009, as incomplete in part because they were submitted without the

$165 filing fee. See CompI. Attachments. "An applicant for a patent, any of whose claims has

been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent

Appeals and Interferences, having once paid the fee for such appeal." 35 U.S.C. § 134(a). And

"[ a]n applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences ...

may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit,

have remedy by civil action against the Director in the United States District Court for the

District ofColumbia[.]" 35 U.S.C. § 145.

\~ t: a'6;

The exhaustion of administrative remedies is a jurisdictional prerequisite to filing a civil

lawsuit arising from the denial of a patent. Leighton v. Cae, 130 F.2d 841, 842 (D.C. Cir. 1942);

see Field v. Manbeck 1990 WL 116818, *3 (D.D.C., Aug. 2, 1990) ("The plaintiff has not

received a decision from the Board of Patent Appeals and thus this Court does not have

jurisdiction over this action in the absence ofa final agency decision, pursuant to 35 U.S.C. § 145

and 5 U.S.C. § 704."). To the extent that plaintiff is seeking a writ of mandamus under 28

U.S.C. § 1651 to compel the PTO Director to waive the patent filing fee, see Form CompI. at 5

(relief sought), he has not cited authority showing that he has a "'clear and indisputable' right to

[such] relief," In re Cheney, 406 F.3d 723, 730 (D.C. Cir. 2005), and "[i]t is well-settled that a

writ of mandamus is not available to compel discretionary acts," Cox v. Sec'y a/Labor, 739 F.

Supp. 28, 30 (D.D.C. 1990) (citing cases). The complaint therefore is dismissed. A separate

Order accompanies this Memorandum Opinion.

United States ~ Date: August 2..JL, 2009

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