Patent applications, abandoned

Abandoned patent -applications may also be a source of unpubhshed data. Some of them are available for inspection, or photostat copies may be obtained. These may be located through digests published in the Official Gazette of the United States Patent Ojffice, By order of that office, dated January 25, 1949 (7), abstracts of abandoned patents are published by request of the applicant or owner. 

The first and easiest thing that might be done is nothing at all. The applicant may simply decide not to pursue the invention, and after 12 months, the provisional application is automatically abandoned without any affirmative action by the applicant required it s as if the patent application never existed at all.12 In this regard, it must be reemphasized that a provisional patent application is not examined for patentability by the USPTO and, accordingly, will never give birth to an issued patent.13... 

If a long time occurs between an actual reduction to practice (meaning the completion of the invention) and the filing of a patent application, then the concept of due diligence is not in play but rather the question becomes one of whether the inventor abandoned, suppressed, or concealed the invention. This possibility is covered separately by 102(c), which pertains to the abandonment of the invention and, more important, by 102(g) where, in a contest to prove who had invented the subject matter first (patent interference), a party found to have abandoned, suppressed, or concealed the invention can lose to a later-inventing party who did not commit one of those sins. More on these two sections later in this chapter. 

A quick review of some of the material presented in Chapter 2 In most cases, patent applications filed after November 29, 2000, in the United States (and the rest of the world) are pubhshed approximately 18 months after the earliest application in the chain was filed. However, if the application is no longer pending (e.g., abandoned) or subject to a secrecy order, it will not be pubhshed. Also, an applicant for patent in the United States can request that the application not be pubhshed but the applicant must certify that the application has not or will not be filed in another country that requires publication 18 months after application. 

Section 102(c) is a little used provision but is still included in this section since a finding of abandonment under 102(c) acts as an absolute bar to a later filed patent application. Abandonment requires intent, either actual or inferred, on the part of the inventor to dedicate the invention to the public. Mere delay in the filing of a patent application, absent more, is not sufficient to impute the motive to abandon the invention onto the inventor.39... 

The only other 102 section that might apply to the prior inventive acts of the German chemist is 102(g), but it will not. Unlike in part (4), we do not have an interference situation. In the previous hypothetical, the German inventor was pursuing a patent in the United States and found himself in a contest to prove who invented the subject matter first. We learned that the German inventor abandoned his patent application in the United States and thus could not be involved in an interference. As a result of this analysis, the date of the act of the invention itself will not be relevant because none of the 102 sections apply to our fact scenario. 

The publication of the patent occurs automatically at the end of an 18-month period following the date of fifing or priority application. It is important to remember that this publication now constitutes prior art. If the publication would interfere with more important patent applications, or is incomplete it is possible to abandon prior to publication with a consequent loss of the priority date. 

A patent application [25] was filed on March 13, 1956 on the catalytic cracking of hydrocarbons with hydrogen X in the names of Milton and Breck. This application, too, was rejected by the examiner because he could not understand wherein our crystalline zeolite X was different from the amorphous, water softening zeolites of the prior art. This objection should have been easily overcome as it was in the basic A and X cases. For some unknown and still unexplained reason, however, this application was abandoned by our patent department on June 30, 1959. 

Alternatively, if the invention and its commercial potential are not fully understood, the applicant could abandon or abandon and refile. This process carries with it the danger that someone else may have filed a patent application between applicant s priority date and the second priority date obtained through the refiling process. When this occurs, the applicant loses the rights to the invention in most countries. This can be especially dangerous in highly competitive areas in which many people are conducting research. 

The companies immediately signed contracts with Ostwald that would have made the chemist a very rich man if his triumph had been real. Within months, however, a young researcher from Germany s largest chemical company, the BASF, debunked it. The newly hired engineer, twenty-six-year-old Garl Bosch, demonstrated that Ostwald hadn t created any ammonia his process merely released ammonia that was already present in small quantities within the iron catalyst itself Ostwald, red-faced, withdrew his patent application and abandoned ammonia research altogether. 

States that provides for publication (136). If and when the application is published or the patent actually issues, the secrecy of the proceeding ends and the entire written record is open to the public. Should a patent not issue, the record will be maintained in secret (137). Thus, assuming corresponding patent applications were not filed in other countries and not published in the United States, an abandoned... 

If the applicant is not successful in overcoming the examiner s rejections and the examiner makes the rejections final, several options remain. Again the applicant may simply abandon the application and, if the application has not been and will not be published, retain the invention as a trade secret. Or, the applicant can refile the application as a divisional, continuation, or continuation-in-part application and continue prosecution in the PTO. The applicant may also appeal the examiner s rejection to the Board of Patent Appeals and Interferences within PTO. If not satisfied with the Board s decision, the applicant may appeal that decision either to the Court of Appeals for the Federal Circuit based on the record before the PTO or to a federal district court for a de novo review. If the examiner s position is overturned, the Federal Circuit or the district court can order the PTO to issue the patent. Appeal to either the Federal Circuit or a federal district court destroys the secrecy of the application as well as that of the record of the proceedings within the PTO and thus destroys any trade secrets that may have been contained therein. 

Such a party could lose priority if that party "abandoned, suppressed, or concealed" the invention. 35 U.S.C.A. 102(g) (West Supp. 2001). For example, if the first party to conceive and reduce the invention to practice decided to keep the invention a trade secret and was spurred to file an application only upon learning of another s invention of the same subject matter, the first party s priority could be extinguished by its failure to file its patent application in a timely manner. 

Novelty and Nonobviousness To be patentable, an invention must be new, useful and not obvious. Section 102 of the Act defines novelty quite technically. An invention is not novel if, before the applicant s invention, the invention was (a) known or used by others in this country ( 102(a)) (b) patented or described in a printed publication anywhere in the world before the applicant s invention ( 102(b)) (c) described in a patent on a United States patent application filed before the applicant s own invention ( 102(e)) or (d) made in this country by another who has not abandoned, suppressed or concealed it ( ... 

The Union Carbide U.S. Patent 4,003,712 on a gas-phase fluidized-bed reactor was issued to Adam R. Miller on January 18, 1977. This patent was a continuation-in-part of two earlier patent applications one filed on August 21, 1967 and another filed on July 29, 1970, both of which were abandoned [36]. This design is shown in Figure 5.21. 

The Japanese patent literature contains even more published patent applications that mention HABI technology. However, under Japanese patent law, patent claims have a very narrow scope. Consequently, a whole series of related apphcations might be filed in Japan when only a single apphcation would be filed in the United States. In addition, in Japan patent applications are pubhshed at eighteen months but are not examined until the applicant requests examination and pays an examination fee. Examination formerly had to be requested within seven years of the filing date, since shortened to three years, or the application is considered abandoned. Examination is never requested for a large number of applications so they act as defensive pubhcations. 

In 1875, a paper by Winkler awakened interest in the contact process, first patented in 1831. Winkler claimed that successful conversion of SOn to S03 could only be achieved with stoichiometric, undiluted ratios of S02 and 02. Although erroneous, this belief was widely accepted for more than 20 years and was employed by a number of firms. Meanwhile, other German firms expended a tremendous amount of time and money on research. This culminated in 1901 with Knietsch s lecture before the German Chemical Society (3) revealing some of the investigations carried out by the Badische Anilin-und-Soda-Fabrik. This revealed the abandonment of Winkler s theory and further described principles necessary for successfiil application of the contact process. 

However, prior knowledge or use in this country, by even a single person other than the applicant for patent, may completely destroy any claim of novelty, according to our law. However, there are recognized exceptions to this rule, particularly where the prior use was merely experimental or where the use had been abandoned or forgotten. The latter doctrine—forgotten or lost art—is applicable primarily to arts or processes, because of the intangible nature thereof, but the doctrine is inapplicable to machines, manufactures, or compositions of matter, which still exist in their entireties, since they can be identified and analyzed if necessary. 

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