In determining whether section 1338(a) is satisfied, the failure of a complaint to reference section 1338 is not dispositive. Morganroth v. Quigg, 885 F.2d 843, 846, 12 USPQ2d 1125, 1127 (Fed. Cir. 1989). Rather, "[t]he critical inquiry is whether in fact the complaint asserted a claim arising under the patent laws."

The fact, however, that "improper revival" is not specifically listed as a defense in § 282 does not provide clear and convincing evidence of legislative intention to preclude judicial review. The larger problem with plaintiff's argument is that the Federal Circuit has clearly held that the PTO's "denial of a petition to revive a patent application is subject to review in the district court" under the APA. Morganroth v. Quigg, 885 F.2d 843, 846 (Fed. Cir. 1989) (emphasis added). There is no sound reason to believe that Morganroth's holding that judicial review of a PTO determination denying revival is available under the APA does not apply with equal force in cases, including the instant case, involving a PTO decision granting a petition to revive a patent application.

See Helfgott & Karas, P.C. v. Dickinson, 209 F.3d 1328, 1334 (Fed.Cir.2000) (holding “[T]he question of whether the Commissioner has violated the APA in applying the PCT rules and regulations, as well as its own regulations, raises a substantial question under the patent laws....”).The question on this appeal is not whether a patent applicant may challenge a PTO revival ruling as to its application; that question was resolved in the affirmative by this court's decision in Morganroth v. Quigg, 885 F.2d 843 (Fed.Cir.1989). The issue here is whether a third party may collaterally challenge and obtain judicial review of a PTO revival ruling concerning an unrelated patent application.

We have formulated the degree of this deference, under our jurisprudence, variously as "substantial," Am. Express, 262 F.3d at 1382-83, and, in the context of a ruling of the Board, as "considerable respect," Kubota v. Shibuya, 999 F.2d 517, 520 (Fed. Cir. 1993) (citing Ford Motor Credit Co. v. Milhollin, 444 U.S. 555, 566, 100 S.Ct. 790, 63 L.Ed.2d 22 (1980)). See also Bayer AG v. Carlsbad Tech., Inc., 298 F.3d 1377, 1381 (Fed. Cir. 2002); Morganroth v. Quigg, 885 F.2d 843, 848 (Fed. Cir. 1989) (stating that the Director's "interpretation of [the regulatory provisions governing abandonment and revival of patent applications] is entitled to considerable deference."). But see Dethmers Mfg. Co. v. Automatic Equip. Mfg. Co., 272 F.3d 1365, 1370 (Fed. Cir. 2001) (subjecting the PTO's interpretation of its own reissue rule to a de novo standard of review), cert. denied, ___ U.S. ___, 123 S.Ct. 2637, ___ L.Ed.2d ___ (2002).

See 28 U.S.C. § 1295(a). Accord Cedars-Sinai Medical Center v. Watkins, 11 F.3d 1573, 1577-80 (Fed. Cir. 1993) (claims based on 42 5908 — vesting title to inventions made in government labs to the United States — arise under the patent laws); Franchi v. Manbeck, 947 F.2d 631, 633-34 (2d Cir. 1991) (mandamus claims related to PTO qualifying exam arise under the patent laws); Morganroth v. Quigg, 885 F.2d 843, 846 (Fed. Cir. 1989) (mandamus and APA claims relating to Commissioner's refusal to revive abandoned patent application arise under the patent laws); Athridge v. Quigg, 852 F.2d 621, 623 (D.C. Cir. 1988) (concurring with analysis in Wyden, below); Wyden v. Commissioner of Patents Trademarks, 807 F.2d 934, 936-37 (Fed. Cir. 1986) (en banc) (mandamus claims related to attorney's authority to practice before the PTO arise under the patent laws); Alco Standard Corp. F.2d 1490, 1493-94 (Fed. Cir. 1986) (claims under 16 for reasonable compensation for patent infringement arise under the patent laws); Dubost v. Patent Trademark Office, 777 1561, 1564-65 (Fed. Cir. 1985) (claims related to PTO's refusal to accept an unsigned check for purposes of computing a filing date arise under the patent laws). III

fy the jurisdictional test. They are infringement, see Additive Controls Measurement Sys., Inc. v. Flowdata, Inc., 986 F.2d 476, 478, 25 USPQ2d 1798, 1799-1800 (Fed. Cir. 1993); see also Scherbatskoy v. Halliburton Co., 125 F.3d 288, 291, 44 USPQ2d 1466, 1469 (5th Cir. 1997); Datapoint Corp. v. VTel Corp., No. 97 CIV. 642 RPP, 1997 WL 220306, at *1-3, 42 USPQ2d 1793, 1795 (S.D.N.Y. Apr. 29, 1997); inventorship issues under 35 U.S.C. § 116, 256, see MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568, 1570-71, 10 USPQ2d 1287, 1290 (Fed. Cir. 1989); see also RustEvader Corp. v. Cowatch, 842 F. Supp. 171, 173-74, 29 USPQ2d 1076, 1078-79 (W.D. Pa. 1993); attorney fees under 35 U.S.C. § 285, see Imagineering, Inc. v. Van Klassens, Inc., 53 F.3d 1260, 1263, 34 USPQ2d 1526, 1528 (Fed. Cir. 1995), and the revival of an allegedly unintentionally abandoned patent application under 35 U.S.C. § 41, 133, or in the alternative, the right to file a continuation application under 35 U.S.C. § 120, see Morganroth v. Quigg, 885 F.2d 843, 846, 12 USPQ2d 1125, 1127 (Fed. Cir. 1989). See also Animal Legal Defense Fund v. Quigg, 900 F.2d. 195, 196-97, 14 USPQ2d 1485, 1486-87 (9th Cir. 1990) (holding that whether animals are patentable is a substantial question of federal patent law under Christianson).

The examiners-in-chief operate under their authority as experienced patent examiners, with "competent legal knowledge and scientific ability," 35 U.S.C. § 7, rather than under the discretionary adjudicatory authority delegated to the Commissioner. Although the APA does not explicitly exempt the Patent and Trademark Office from its standards of review, and we have reviewed certain actions of the Commissioner in the exercise of his discretionary duties according to APA requirements, see, e.g., Ray v. Lehman, 55 F.3d 606, 608, 34 USPQ2d 1786, 1787 (Fed. Cir. 1995) (denial of petition to reinstate patent for failure to pay maintenance fee properly reviewed by district court under APA's abuse of discretion standard); Morganroth v. Quigg, 885 F.2d 843, 846, 12 USPQ2d 1125, 1126-27 (Fed. Cir. 1989) (refusal to revive application properly reviewed by district court under APA's arbitrary, capricious, abuse of discretion standard); Heinemann v. United States, 796 F.2d 451, 453-54, 230 USPQ 430, 433-34 (Fed. Cir. 1986) (award of patent to United States instead of employee properly reviewed by Claims Court under APA's arbitrary, capricious, abuse of discretion standards), we have not held the board's patentability decisions to the requirements of 5 U.S.C. § 554 (adjudications other than those subject to de novo review), 556 (hearings required by § 552-53), or 557 (decisions when hearings are required by 556). Since the creation of this court, we have consistently applied the clearly erroneous standard when reviewing factual findings of the board.

The Commissioner responds that this rule clearly places the burden on Kubota since the declaration of interference was also an interlocutory order presumed to be correct. We accept the Commissioner's reading of these rules because it is entitled to deference, see Morganroth v. Quigg, 885 F.2d 843, 848, 12 USPQ2d 1125, 1128 (Fed. Cir. 1989) (The Commissioner's "interpretation of [the regulatory provisions governing abandonment and revival of patent applications] is entitled to considerable deference."), and because it is consistent with the language of the rules. Kubota's citation of 37 C.F.R. § 1.657, which creates a rebuttable presumption based on effective filing dates, is also misplaced. Because Shibuya's effective filing date is the very point at issue, entitlement to it must be decided before any presumption under this provision is operative.

In issuing and interpreting regulations for limited reexamination, the USPTO's position is entitled to "considerable deference." Morganroth v. Quigg, 885 F.2d 843, 848 (Fed. Cir. 1989). Upon review of Plaintiff's ’938 application, the USPTO examiner found that the claims originally submitted to the USPTO were directed to "image processing of recorded frames of animated environments."

See Autodesk, Inc., 466 F. Supp. 2d 563 at 565 (finding same). See also Morganroth v. Quigg, 885 F.2d 843, 848 (Fed. Cir. 1989) (holding that the Patent Office's interpretation of statutory and regulatory provisions regarding abandonment and revival of patent applications is entitled to "considerable deference"). Accordingly, this court may "not substitute its own judgment for that of the agency."