Paranoia Power: Confidentiality Before and After Patent Filings

Gene Quinn

March 4, 2011, 03:52 PM 6

An updated version of this article is available at:

https://ipwatchdog.com/2013/11/16/justified-paranoia-confidentiality-before-and-after-patent-filings/id=46374/

Gene Quinn Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named one of the top 50 most influential people [...see more]

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6 comments so far.

what a mess
June 16, 2012 05:27 pm
Gene – Blue might be joking or is a bit off. But the following is just plain nuts – In 2001, a doctor in CT hired a high profile NYC patent atty to file a patent for a formula to stop the tampering and abuse of certain medications. A month after the PPA was filed, the atty convinced the Dr. to allow him to submit the PPA to the Rx comp getting the most grief and making the most profit on this type of time-release medication with the expectation of a licensing and development deal. A month later, unknown to the doctor and supposedly his atty, the Rx comp scientists filed 6 PPAs inspired by the Dr.’s PPA. This was the same day the State Atty Gen announced an investigation of the Rx comp. All the applications were filed 1 yr to the day later and examined by 2 examiners under one SPE who had many yrs experience examining patents for the Rx comp. The Dr.’s application was rejected 102, 103, 112. An Office Action got “lost” and never arrived at the atty office and the request to reage was ignored. So an RCE was filed in the 35th month. The original atty who claimed close personal ties to the owners of the privately held Rx comp left the firm after this and refused to take the case with him due to “conflicts”. By 2005, the atty cost for the Dr. far exceeded the $8-15k range given by the original atty so the Dr. took over prosecution himself in 2006 after speaking w/ the examiner several times in late 2005 and being told the atty was too aggressive and causing rancor which delayed allowance. Despite numerous letters on the Dr’s ltrhd and phone calls w/the Dr., the examiner sent responses to the former atty shortening the time the Dr. had to reply. Not a single phone call was noted. All ?s from the Dr. asking for help in claim language were rebuffed and examiner said it was against the rules for examiner to help w/claim language. In the first few months after the doctor released the attys, over several phone calls, the examiner convinced the Dr. the claims were too broad & encouraged him to cancel the original claims and rewrite new ones which he did being very careful to not introduce new matter. Examiner also tried to get Dr. to limit claims to only one form of the controlled substance but Dr. insisted it was platform technology for all forms. The Dr. became wary and called the SPE 7 times leaving detailed messages, but got no response. He also called the legal office and heard the term “hindsight” for the first time and was given the phone number for the Inventor’s Hotline. With deadline upon him and funds exhausted, Dr. submitted new claims by mail and fax due to promise by Examiner that she will allow the new claims as they discussed. On the same day as the fax w/new claims, the other Examiner for the first of the 6 applications from the Rx company inspired by the Dr.’s disclosure called the Rx comp atty and said “I am going to do this this and this to these claims and submit Examiner’s Admendment and prepare for allowance”. The Dr.’s Examiner, w/the same SPE as the Rx comp examiner, in Oct 06 issued an Office Action on the new claims dropping previous 103s w/no explanation and used a new 103 obvious by combining a patent incorporated by reference with an obscure number the Dr. thought must be a foreign patent. A call to the Hotline revealed that it was the publication number, (not the PPA# or the Non-PPA#) of the item which was made allowable w/the phone call mentioned above. Turns out the date on the Office Action citing this publication # w/no other identifying information coincided w/the issue fees being paid to issue the 1st patent attached to that publication #. The Rx comp was issued the patent 12/5/06 without ever being held obvious over the Dr.’s priority application. (They have received another 10 patents on those 6 PPAs since then.) In Nov 06, the former atty filed petition to be removed because mail was still being sent to them. It was never granted by Commissioner’s office. The Hotline instructed the Dr. exactly what to say in response to the publication number (to say only and no more “submitted before or after my application” in response; not to argue the merits; Dr. had told Examiner numerous times that he had offered his IP to the company and Examiner identified the company as “a known commodity” to the office in her conversations with the Dr.). Hotline also told him that even though he had fulfilled everything needed to get the representative of record and the address changed numerous times, to also submit a formal POA change. The Dr.’s response to the publication # 103 and the POA were sent clearly marked w/all forms typed on 12/31/06 – and “disappeared”. Not kidding – according to the Office “Disappeared” – but the Examienr claimed to have received it. Multiple calls to the Examiner assured him that she was working on it. Then in 5/07 the former atty forwards a non-compliance notice – so over 15 months and office actions etc still being sent to former atty while amendments etc are being accepted and entered with Dr.’s signature and ltrhd only. Dr. asks Examiner how he can get access to whatever computer files she and the retired SPEs at the Hotline are looking at and she tells him that only USPTO employees and registered patent atty and agents can get access – citizen Dr. cannot. Dr. calls Hotline and is told his IP is abandoned. Calls SPE and leaves frantic message. A new SPE calls back. This one is also new SPE to Rx comp Examiner and also has history as Primary Examiner for Rx comp scientists. Promises to investigate and tells Dr. it appears his records has “been tampered with” to cause abandomnment – will investigate and fix. Helps Dr. log onto USPTO.gov and see his own PAIR for first time. Dr. prints Transaction History. 6/07 & 7/07 spent resending 12/31/06 response to office action to this new SPE and being told it is not clear. SPE ultimately leaves message that “he doesn’t know HOW this application got so effed up but it was handled very badly” and he had “fixed” it. The Transaction History today is markedly different from the one printed 5/07. The Image File Wrapped is missing items Dr. has in his files with copies of mailing labels and fax confirmations. Examiner instructs Dr. to file another RCE and pay fees. The 9/07 Examiner’s Office action responding to Dr.’s 12/31/06 and 7/07 submissions drops all 103s without explanation and is 112 only written description and new matter. Hotline recommends BPAI. Dr. informs Examiner he is going to BPAI but she insists they can work it out. They go line by line, page by page from the PPAs and original claims and agree that no new matter or written description issues remain. Dr. beginning to catch on to Examiner telling him on phone his IP is good and deserves patent protection and then rejecting. Dr. faxes his response to 9/07 112 rejections to SPE who “fixed” file asking for his input but hears nothing back. Discusses with Examiner that cost of appeal and cost of another RCE is same and says he is going to BPAI but thanks for helping him work out the line by line response. Examiner goes off and tells him she has promised to grant allowance based on their negotiations and tells him it will take 4-6 yrs to get decision from BPAI. . Dr discusses her assurances with Hotline, they agree and tell him that since Examiner has negotiated and guaranteed the allowance to file the RCE with response – it will be faster. No one noticed that not a single telephone call log is entered by the Examiner although the Dr.’s fax covers and misc lttrs make it clear they have been speaking and negotiating. Sends it all in in Dec 2007 with expectation of finally gettting allowance and multiple reassurances from Examiner that he’d get “all his time back” when it was issued.
In the last phone call before he sends it in, Examiner also tells him she will have to get final approval from the Quality Assurance Bd set up for this for this particular type of Rx. Dr. offers to travel to Alexandria to defend his IP himself but she assured him she and her new SPE (now a woman SPE) can argue his case in front of this committee. Dr. learns much later that there is not such board like this and the Quality Assurance review is a random check of all patents issued. Shoulda coulda known that mention of needing “approval” from someone else was a tell that she was lying again but alas no. Naturally none of these phone calls were reduced to writing by examiner and only mentioned in the Dr.’s cover letters thanking her for her help and guidance etc. Never has a single Office Action given any written guidance on how to traverse objections nor does any Office Action ever explain why a certain objection has been “traversed” and a new 103 been pulled out of her hat. In 3/08 – Examiner comes back w/all new 102, 103, 112s. Dr. calls Art Unit Director at suggestion of Hotline personnel. Writes very specific letter asking for new Examiner and for help and asks that letter be made part of record. It is not. Art Unit Director office calls, says he’ll assign investigator. Nothing happens. Except – some items appear in Dr.s Image file wrapper for 2007 with a gray bar across the bottom stating they were copied on 5/20/2008 over from another application (abandoned) in the Mechanical Arts 3700. The gray bar oddly covers the area where the fax info that was originally on items. The POA change is never granted by Commissioners office. The missing 12/31/06 copy is clean with no notations on it as if it was in fact there all along. Examiner and hotline keep telling Dr. the BPAI will take too long, to work it out with Examiner. Dr. refuses to make any changes except to spell out all the versions of the drug the IP can be used with and submits. Receives another rejection 9/12/08. Calls Doll’s office that day. Sends letter and fax that day. Gets back odd letter 2 months later which basically says, sorry for the delays, now you know all telephone conversations should be reduced to writing (which they were in the Dr.’s responses and cover notes to Examiner), nah nah nah, go to the BPAI and mentions that they are responding to his ltr of July 17, 2008 when his ltr was dated Sept 12, 2008. Appeal brief is sent. Examiner, along with a QAS and SPE sign off on a response which flies in the face of basic biochemisty and suggests combinations which would create a highly addictive and easily tampered and leathal drug and claims their odd formula makes his obvious. In an end note of the repsponse to Appeal Brief , Examiner admits to numerous phone calls with Dr. over the yrs because she has misunderstood his dicussion of 1st SPE never calling him back despite numerous calls and messages: Her poor English as a 2nd language leads her to believe it refers to her not calling him back. BPAI reverses all 112s and on page 15-16 reverses the Examiner on the key ingredients due to the crazy formulations suggested by the Examiner and supported by her SPE and QAS. It is as simple as moving two dependent claims into independent claims – similar to what the Rx company Examiner did in an Examiner’s Amendment back in 2006 but much less complaicated. Dr. gets decision. Calls QAS to ask what to do next. QAS leaves message, “Dr. , you fought a good fight, too bad you lost. It’s over.” Dr. gets QAS on phone and makes him read pasge 15-17 out loud. QAS is suddenly “helpful” it seems. Dr. refuses to talk to Examiner again. Instead of issuing Examiner Amendment on the Claim Indentifiers, Examiner, SPE and QAS hold up issue by demanding that the Dr. make the changes himself and that he speak to the Examiner. Like putting a dog’s face in its mess. Issuance happens finally 7 months after the BPAI decision – 10 yrs and 2 days from the original PPA filing. PTA is only 600+/- days. No one in legal office, SPEs, Art Unit Director, Hotline, etc has once mentioned to Dr. that the RCE in month 35 restricted patent term by 6-8 yrs. It is not mentioned in MPEP or on RCE forms. PTA breakdown includes 159 blamed on the Dr. during which the 12/31/06 response was lost or not lost or in another art unit etc while Examiner was claiming she had it and was working on it knowing that Dr. did not have knowledge of PAIR. Legal Office tells Dr. that they can see he did not change claims for at least 4 yrs and to go directly to fed dist court as they can do nothing in-house. They also tell him he cannot use 35 USC 154 in his complaint. First he has heard of it. Finally at this late date understands that Examiner was working under orders to reject at every turn – only exlpanation for her comments on calls I participated in where she said she would allow, and it was good IP and deserved Patent Protection and then the crazy Office Actions which contradict everything she said. This foreign national was being told what to do from superiors – I have no doubt about this. Rx company is making several billion a yr off of “reformulation” of drug inspired by Dr.’s disclosure. Despite several letters and emails in 2002 requesting his PPA be returned from the Rx company, the Rx comp ended up telling his original attorney who made the licensing deal sound like a slam dunk that they had written notes all over his PPA and it was attorney-client priv and could not be returned. Several lessons I take away from this: Never let your attorney give your IP to anyone until it is issued. The legally naive are going to get screwed if they are working full time while attempting to pursue a patent pro se or with an atty. The USPTO favors large fee paying clients over individuals creating 2 classes of citizens in the office. Some major public health problems are such huge revenue generators for Rx companies, rehab centers, law enforcement property seizure, and politicians coffers that no one wants to solve the problem no matter how many people die. Despite Blue’s ideas about mind reading, the barriers erected by the PTO against this Dr. and his IP and the red carpet treatment given to the Rx comp would not have been so egregious if the atty had not disclosed the IP which resulted in the competing applcations. I am sure there are other lessons as well. I don’t blame the Dr. – his mission is to help people and solve health problems – it is a completely different mindset than that of an atty or even a businessman. “Normal” Americans do not think their gov’t is out to get them or to deny them their property or that the USPTo would deliberately delay IP that addresses an urgent public health issue. It takes a criminal mind really to imagine just how criminal a gov’t agency can be under pretense to the law and procedures. The sheer number of MPEPs, (& USCs and CFRs) violated by the office in this one case is amazing. If he gets to discovery, the number of phone calls btwn the Dr., the Examiner, SPEs, DIrector’s Office, Art Unit Dir etc will be interesting to count. I wonder, is there other innovative IP stuck in the USPTO that could drastically change the landscape of energy, education, clean air and water, food production etc that is being held up in the USPTO simply because it would change the landscape and the revenue flows of a particular industry or company. I have read about an application for software that auctions hotels rooms, dinner reservations, tee times, opera, Broadway, livery service and does it with a set of inputs and does not overlap anything setting everything up sequentially – this would be a great timesaver for travlers and business people and would also threaten some of the large travel and activity/services auction sites – this applicaiton is also being tied up for yrs and yrs to make it worthless it appears – I don’t have time to thoroughly examine it as I am helping with this one. When Dudas said it was the “mission of the USPTO to protect revenues”, I don’t think this is what he meant at all. The gov’t protecting the revenues of one company or industry against another who has innovated and/or solved a long felt need is criminal if you ask me. Probably happens every day though. The yrly cost to taxpayers for uninsured ER visits for OD is staggering and could have, should have been stopped. Keep up the good work Gene and keep warning the unwashed that many Art Units see the process as a contest to grind them into the ground until they give up. The innocent days of the patent office are long gone. No offense but perhaps there are too many attorneys involved. Or too many lobbiest. It is a shame Doc did not know about your website or the online MPEP back in 2001 onward. Thanks.
blue
March 6, 2011 04:33 pm
gene,

inventors may not worry about it because i suspect many of them dont know whats really going on. I was expecting you to say things like “are you joking?, you cant be serious, are you insane..etc”. Actually they would not take your ideas as long as you could patent them promptly. That being said, i have noticed that these AI machines do make ‘mistakes’ occasionally by sharing the critical elements of your ideas with third party buyers of these ideas, in real-time. The machines, i suspect, are only meant to take the stuff that dont fall within the scope of your invention but like i said, they do make errors but not frequently.

I didn’t believe what i was experiencing myself until i did some research and found undisputed evidence to prove the existence of these mind reading devices. If you had a chance to get hold of a device wouldn’t you be tempted to put it into good use??? 🙂
Gene Quinn
March 6, 2011 04:01 pm
New Here-

You are exactly right to point out that there are those out there who are all to eager to have people tell them about their ideas/inventions. They know the law well and know that if you don’t have a patent and they don’t sign a confidentiality agreement then they are free to take and use your ideas.

-Gene
New Here
March 6, 2011 03:28 pm
“Most inventors know that a healthy amount of paranoia goes a long way when dealing with an idea or invention. Ideas cannot be protected, so if you tell others they are free to use them unless they have signed an agreement saying they will pay you if they use your idea — good luck with that!”

Gene, the healthy amount of paranoia is on the money, I have people that get mad with me because I will not say a word about my ideas. The reason I give them is that people are people, and they talk, meaning no harm but at times mention things they have read or heard.

The other reason is that some with the funds and know-how are *all-ears* and ready to jump on any good idea. You never know who they are. When it happens, I have to think that not everyone of them will do the best job, more like screwing it up with no chance being able to introduce it again in the future. Not having to mention the damage and loss.

You know about my *open source*, ok, only to say that I have my own ideas about any code I license. My idea is to make money with my idea FIRST, then later find the best way to license it as *open source*. It is a different story when you *open source*, the license guides the life of the code, that a poor choice of a license could have my code taking on a life of it’s own within other hands.

So, the healthy amount of paranoia even applies to licensing *open source*. More often questions about the gain of others contributions VS control, as well marketing VS community distribution. The unanswered questions are those of not knowing what happens to your work once you introduce it and make it available.
Gene Quinn
March 6, 2011 11:14 am
blue-

Are you just joking around? You don’t really think people have to worry about the CIA or NSA stealing their inventions by reading the mind of an inventor, do you?

-Gene
blue
March 5, 2011 06:57 pm
gene,

you have not mentioned the risk of having your ideas stolen by corrupt personnel from the intelligence community (the CIA, NSA..etc) who have access to technologies that can read and manipulate your thoughts. Numerous patents on reading & interpreting thoughts have been awarded in the last 40 years. You should check them out if you have time and perhaps address the risks in your articles.