Thursday, February 12, 2015

The USPTO does not investigate allegations of fraudulent patent applications

Relevant to a post at PatentlyO about 37 CFR 1.56 [“no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.” 37 C.F.R. 1.56  ]

IPBiz thought of the disturbance in the press when a "Hwang Woo Suk" patent issued;
from IPBiz in February 2014:

Back in 2005, South Korean scientist Woo-Suk Hwang published a landmark paper on stem cells in the journal Science. The underlying data were later determined to be inaccurate, if not fraudulent. Nine years later, one has a related US Patent. The first claim of US 8,647,872, with second named inventor Woo-Suk Hwang, recites

An embryonic stem cell line derived from a nucleus-transferred oocyte prepared by transferring a nucleus of a human somatic cell into an enucleated human oocyte, which is a cell line deposited under the accession number KCLRF-BP-00092.

The claim requires that the embryonic cell line be derived from the cell line deposited under accession number KCLRF-BP-00092. A cell line not so derived does not fall within the literal scope of claim 1.


Some people were "up in arms" because the USPTO issued a US patent the underlying work for which was known to be fraudulent.  But, the policy of investigation at the USPTO did change in 1988, as noted in the comment below.

one commenter at PatentlyO observed:

It is unlikely you will find any recent instances “since as of October 11, 1988, the Patent Office does not investigate allegations of inequitable conduct in connection with original, reexamination or reissue applications. 1095 O.G. 16. Information regarding such allegations that is provided to the Office will be placed in the file history without comment. 37 C.F.R. § 1.555(c) (1992) (“. . . no examination will be made by the Office in the reexamination proceeding as to compliance with this section [setting forth the duty to disclose]. If questions of compliance with this section are discovered during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.552(c).”) MPEP § 2010 (6th Ed. rev, 2, July 1996) (“[T]he Office does not investigate and reject original or reissue applications under 37 C.F.R. § 1.56. Likewise, the Office will not comment upon the duty of disclosure issues which are brought to the attention of the Office in original or reissue applications except to note in the application, in appropriate circumstances, that such issues are no longer considered by the Office during its examination of patent applications.”) 37 C.F.R. § 1.291(b) (“Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues.”)”
More info is in the “Annotated Patent Digest Section 27:27 Patent Office Will Not Investigate Non-Compliance,” including two pre1988 examples
See e.g., In re Harita, 847 F.2d 801, 6 USPQ2d 1930 (Fed. Cir. 1988) (Patent Office sole basis for rejection of claims in reissue application was alleged violation of duty of disclosure); In re Jerabek, 789 F.2d 886, 229 USPQ 530 (Fed. Cir. 1986) (inequitable conduct used as basis for rejecting claims in reissue proceeding).


Another commenter stated

In Cebalo v. Driscoll v. Hoegerle, 5 USPQ2d 1497 (Comr. 1985), a pending application and two abandoned applications were stricken by the PTO under Rule 56 for violating the duty of disclosure. Also, in Jessel v. Newland, 195 USPQ 678 (Comr. 1977), a plant application was stricken for violating Rule 56, but the decision was reversed on reconsideration (196 USPQ 504 (1977)).



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