Thursday, October 22, 2009

Not Schrodinger's cat

In a post titled Be All You Can't Be: Army Patent Ambushed by Friendly Fire, Aaron R. Feigelson describes a patent that "ran out of time" before it issued. Aaron's point is that the patent was DEAD on arrival.

A different blog refers to this as relating to Schrodinger's cat, a thought experiment wherein the cat was both dead and alive.
IPBiz does not see Aaron's example as related to Schrodinger's cat.

See also

**Update. Comment to 1201:

Interesting story. Of the first-named inventor of the '811: On Dec 8, 2000 Col Daniel L. Jarboe became the first veterinarian to assume command of the largest biomedical research institute in the Department of Defense. Col Jarboe is now the director/commander of the Walter Reed Army Institute of Research, located on the Forest Glen Annex of the Walter Reed Army Medical Center, Washington, DC. Previously he served as the deputy director/commander. [ ]

Is it possible this patent was pursued to issuance for defensive purposes, to obtain its 102(e) date?

**Further update.

As to Aaron's comment, 37 CFR 1.221:

§1.221 Voluntary publication or republication of patent application publication.

Any request for publication of an application filed before, but pending on, November 29, 2000, and any request for republication of an application previously published under § 1.211, must include a copy of the application in compliance with the Office electronic filing system requirements and be accompanied by the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). If the request does not comply with the requirements of this paragraph or the copy of the application does not comply with the Office electronic filing system requirements, the Office will not publish the application and will refund the publication fee.

The Office will grant a request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section only when the Office makes a material mistake which is apparent from Office records. Any request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section must be filed within two months from the date of the patent application publication. This period is not extendable.

One might ask if a voluntary publication under 1.221 does "count" as a publication under 35 USC 1.22(b) which states in pertinent part:



(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.

(B) No information concerning published patent applications shall be made available to the public except as the Director determines.

(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and nonreviewable.


(A) An application shall not be published if that application is-

(i) no longer pending;

(ii) subject to a secrecy order under section 181 of this title;

(iii) a provisional application filed under section 111(b) of this title; or

(iv) an application for a design patent filed under chapter 16 of this title.

In passing, two other sections of 35 USC 1.22(b):

(c) PROTEST AND PRE-ISSUANCE OPPOSITION.- The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.

(d) NATIONAL SECURITY.- No application for patent shall be published under subsection (b)(1) if the publication or disclosure of such invention would be detrimental to the national security. The Director shall establish appropriate procedures to ensure that such applications are promptly identified and the secrecy of such inventions is maintained in accordance with chapter 17 of this title.


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Blogger aaron said...

Reply comment to LBE on 1201:

Thanks for the added detail, LBE. I've got a feeling there are many good backstories here.

As for the 102(e) question, another commenter raised that in response to Tuesday's post. The answer is that voluntary publication under 1.221 would likely have sufficed to get a 102(e) date (it counts as a publication "under 122(b)", as required by 102(e)), and would certainly have saved taxpayers thousands of dollars. Like the $930 it spent just last year on the 4 year maintenance fee for the '010 patent. (How'd I miss that...)

Of course, the other big story here is to note that the PTO has absolutely no problem taking your money for all those fees...


5:51 PM  

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