This is the story of a US patent application that went abandoned and thus shouldn’t have been published, but which the USPTO published nevertheless because of an improper benefit claim, a benefit claim that prima facie was improper but that the USPTO didn’t bother to check.
A well-known feature of the US patent system is the ability to claim the “benefit” of an earlier-filed US application, either a provisional or a non-provisional. This is what gives rise to the ability to file continuation applications ad infinitum. There are only two substantive requirements in claiming the benefit of an earlier US application:
- there must be at least one common inventor between the earlier- and later-filed applications, and
- there must be at least one day of co-pendency between the applications. See 35 USC §119 and §120.
It’s also well-known that unpublished, abandoned US patent applications remain unpublished, unless they serve as a basis for a benefit claim in a later-filed, subsequently-published application. In such cases, the earlier, abandoned application is supposed to be made available to the public.
But what happens if an improper benefit claim is made in a later-filed application?
USSN 13/010796 was filed January 11, 2011, without fees and without inventors’ declarations. No inventor was named (neither an application data sheet (ADS) nor an application transmittal form was filed), although the EFS acknowledgement form lists one Shmuel Sternklar as the inventor; presumably this name was manually entered when the application was filed via EFS. The title of the application was “METHODS AND SYSTEMS FOR MEASURING THE FREQUENCY RESPONSE AND IMPULSE RESPONSE OF OBJECTS AND MEDIA”. On February 3, 2011, the USPTO mailed a Notice of Missing Parts, asking for the fees and other documentation within two months, but no ADS, fees or declarations were ever filed or paid. This resulted in abandonment of the application, the Notice of Abandonment being mailed in October 2011. Note that the USPTO’s view is that the abandonment was effective as of the date of failure to comply with the Notice of Missing parts, i.e. April 4, 2011.
On March 8, 2011, USSN 13/043,203 was filed. The transmittal form filed at the time listed one inventor, McKelvey, and stated that this application was a CIP of USSN 12/903753. The title of the application was “Integrated read head device”. The body of the application included the requisite statement about benefit claims, including a benefit claim to the aforementioned USSN 13/010796, filed January 11, 2011. On April 25, 2011, a declaration from the sole inventor, Jim McKelvey, was filed, which included several benefit claims, among them a benefit claim to said USSN 13/010796. On May 4, 2011, a filing receipt issued, listing the benefit claims, including the benefit claim to USSN 13/010796. In PAIR, the “continuity data” likewise lists a benefit claim to USSN 13/010796. See the screen shot below. The ‘203 application eventually matured into patent no. 8,573,487, which is assigned to Square, Inc.
It’s clear to anyone with a brain that the benefit claim to USSN 13/010796 is a typo: the ‘796 and ‘203 applications list different inventors, and that alone should have been a red flag for the USPTO. Moreover, the two applications have different titles, different numbers of pages, completely different drawings, and completely different texts. (What was meant instead of USSN 13/010796 may have been 13/010976, also filed on January 11, 2011, and which lists Jim McKelvey as one of the four inventors.)
Unfortunately, brains are a commodity in short supply in many parts of the USPTO. The mismatch between the ‘203 and ‘796 applications was of no concern to the PTO, which clearly didn’t even bother to check the benefit claim, and proceeded to make the file wrapper of the unpublished, abandoned ‘796 application available on public PAIR when the ‘203 application published on April 19, 2012.
Although in the present case, it doesn’t appear that any damage to the ‘796 applicant ensued as a result of the USPTO’s unauthorized publication of that that application (for reasons we don’t go into here), it doesn’t take much imagination to realize the potential damage that can be caused by such unauthorized publication. Suppose, for example, that the inventor of the ‘796 application assumed his application would remain secret, didn’t discuss his invention with anyone, and re-filed the ‘796 application as a new PCT application on April 20, 2012. Thanks to the USPTO, he would have no chance of getting patent at the EPO or in most other countries, because his now-published-despite-being-abandoned ‘796 application became public the day before. That’s absurd, because unauthorized publication could easily have been prevented by the USPTO, had it troubled itself to take a minute to check for the two statutory requirements for a benefit claim, co-pendency and a common inventor.
The USPTO’s dereliction of duty in this case is even more astounding given the USPTO’s predilection for harassing applicants about far more minor issues, such as second-or-later ADSes that are “improperly” marked to show corrections, or the omission of a status identifier from one claim among many in an amendment. Those minor issues have no impact on the potential secrecy of one’s application. As the present case illustrates, however, the abandonment of one’s own application, an application to which that applicant hasn’t made any benefit claim in a subsequent, published application, is no guarantee the USPTO won’t publish the abandoned application. That’s a disconcerting thought for us patent practitioners.
A question worth considering is, Would the result have been different had the applicant expressly abandoned the ‘796 application, rather than just not pay the fees? We don’t know the answer to that one, but the guess is that the answer is no: as long as the follow-on application was filed within one year of the filing of the earlier application, the later application can benefit from the earlier application, even if the earlier application was abandoned.
For the later inventor, McKelvey’s, there are also potential issues. If it was important to receive the benefit claim to whatever application other than the ‘796 application was intended, then the ‘203 applicant has a problem, as it is too late at this stage to make such a benefit claim. But an interesting question also arises with respect to the ‘203 applicant’s duties toward the ‘796 applicant. Ostensibly, the ‘203 applicant had no duties toward the ‘796 applicant. Yet had the ‘203 applicant carefully checked its papers – at the very least, the filing receipt received two months after the filing of the application – it would have discerned that an incorrect benefit claim was being made, and taken corrective steps, before any damage was caused to the ‘796 applicant by the unauthorized publication of that application, thus serving both its own interests in perfecting the correct benefit claim, and the interests of the ‘796 applicant. Certainly, the USPTO and the ‘203 applicant were better positioned than the ‘203 applicant to mitigate the harm before it occurred. Applicants who allow their cases to go abandoned before publication shouldn’t have to check to see if any later applications improperly claim the benefit of the earlier, abandoned case.