Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
IN RE: JOHN DOE
May 31, 1988
Donald J. Quigg
Assistant Secretary and Commissioner of Patents and Trademarks
DECISION
Introduction
*1 On April 12,
1988, an order was issued in the case of John Doe (hereinafter Doe) to show cause why a serious breach of Patent
and Trademark Office (PTO) regulations had not occurred and why his User Pass
and visitor privileges should not be suspended or revoked. Specifically, Doe
was charged with violating the following PTO regulations:
1) Visitors to the
Patent Examining Group Search Areas must register with the designated Group
Search Area representative indicating the times entering and leaving the area,
User Pass number, and the class(es) to be searched. Section 2(f).
2) Documents removed
from the files of Patent Examining Group Search Areas must be immediately
returned to their proper location after use. Documents shall not be removed
from the area in which they were obtained without specific written
authorization from a Group Director or Supervisory Patent Examiner in the
Examining Group where the material(s) reside. Such authorization will not be
given for U.S. Patents and other material readily available through the
Scientific Library. Section 2(g).
3) PROHIBITIONS
. . . Placing PTO files
or documents, government property or government owned reference materials in
rental storage lockers. Section 3(k).
Regulations Relating to the Use of Patent and Trademark Office
Records or Search Facilities.' A hearing was held before the Commissioner on
May 25, 1988.
Facts
On March 16, 1988, a PTO employee discovered
a large number of PTO foreign references in a locker in the PTO's Patent Search
Room. The PTO rents these lockers to members of the public. The lock of this
particular locker (No. 61) did not operate. Along with these PTO references,
certain papers identified as belonging to Doe were found in this locker. These
materials were removed from the locker. On March 17, 1988, another large group
of references were discovered in the same locker.
On that same day, Doe
approached the PTO employees who had removed the references and requested the
return of his personal papers. The personal papers were returned but the
references (now totalling approximately 218) were retained. Doe has admitted
that he did not follow proper PTO procedures when he entered the group Search
Areas and removed the foreign references. The references had been removed from
the Group Search Areas for at least several weeks. Doe attributed his
violations of these PTO rules to the fact that his workload had greatly
increased in the last several months and he took shortcuts to help alleviate
the pressures created by this increased amount of work.
Opinion
In patent cases, the PTO
has two important missions. First, it must examine patent applications and
issue valid patents. Second, it must make information about patents readily available to businesses,
other inventors, and members of the public. To help it meet its goal of issuing
valid patents, the PTO has acquired vast amounts of resources which include
U.S. patents, foreign references, and other technical literature. If the
mission of the PTO was merely to issue valid patents much of this information would
be restricted from public use to preserve the integrity of these records. Yet,
the PTO has historically made these records available to the public so that
private parties could make informed decisions in patent cases. The PTO took
steps to balance the goals of document security and examiners' search file
integrity with public access. U.S. patents are available to the public in the
Patent Search Room by patent classification. The PTO regulations also allowed
the public access to the Group Search Areas to search foreign references by
classification. The removal of references from an examiners's search file by
the public is allowed only with the permission of the appropriate PTO official.
*2 As with most
Government institutions in a free society, the PTO was required to rely, to a
certain extent, on the voluntary compliance on the part of the public with its
procedures. The equally unpalatable alternatives were to either restrict public
access or devote large expenditures of scarce public funds for elaborate
security systems and additional security employees. Doe's decision to violate
these PTO procedures for his own benefit was an extremely serious breach of
those regulations. As a private searcher, Doe obviously knows how important it is to locate and search all
relevant references before forwarding his search results to a client. Despite
his own experience, he willfully deprived others of the opportunity to properly
search the PTO's files. While it is unknown if any patents improperly issued
because some of these references were missing from the examiners' search file,
or if decisions were made by private parties without the benefit of the most
pertinent references, Doe's violations of these PTO regulations make it
possible that such consequences may have occurred.
It is also apparent that
the PT may have relied too much on voluntary compliance by the public with PTO
regulations and not enough on strict enforcement of its own regulations.
Members of the public may have mistakenly belfieved that the PTO was not
serious about the security of PTO foreign references. One of the purposes of
this decision is to make it clear to the members of the public who use the PTO
search facilities that references must be promptly returned to the files and
appropriate regulations must be followed.
Decision
There can be little
argument that the removal of 218 foreign references from an Examiners'
searchfile for several weeks without following established PTO procedures is a
very serious breach of PTO regulations. Because of this Doe's User Pass and PTO visitor privileges are
hereby revoked for a period of one year. In light of Doe's cooperation with the
PTO in this case, his attitude at the hearing, his previous good record, and
the possible misunderstanding on the part of the public of the necessity of
strictly following PTO procedures when removing references, the final eleven
months of the revocation of his User Pass and visitor privileges are suspended
on the condition that Doe obey all PTO regulations set forth in 'Regulations
Relating to the Use of Patent and Trademark Office Records or Search
Facilities.' Doe's User Pass and visitor privileges will be revoked effective
June 13, 1988.
7 U.S.P.Q.2d 1739
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