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September 1997
Project Mousetrap... FTC and PTO Narrow Beaten Path for Unscrupulous Invention Development Companies
by Nancy Linck
On July 23, the Federal Trade Commission (FTC) and the PTO kicked off a major law enforcement and consumer education campaign called "Project Mousetrap." The program is a joint effort to combat the problem of unscrupulous invention promoters who take advantage of an inventor's enthusiasm for a new product or service.
Fraud by unscrupulous invention developers on America's inventors must be stopped. Project Mousetrap is an important step toward this goal. Unscrupulous invention developers not only rob America's inventors of their money-they also rob them of their dreams. Further, they misuse our patent system to do so. This causes inventors to lose faith in our patent system and to distrust everyone connected with the system, even those who may be able to help them protect and commercialize their inventions.
Our country cannot afford the high cost of such fraud. We are at a time in our history when we must depend upon the works of our minds to remain a world leader. We must create new, innovative products and processes. America has always been a leader when it comes to creativity. But creation alone is not enough. Protection for America's intellectual property is essential. If America's inventors don't protect and commercialize their inventions, others will use them freely. Our inventors will not benefit from their work and, ultimately, will stop inventing. Thus, fraud on America's inventors is fraud on our country and its patent system.
Our challenge is to stop unscrupulous invention developers while continuing to provide inventors with easy access to our patent system. For example, the PTO's Disclosure Document Program provides inventors with a way to submit evidence of invention to the PTO. Under the program, an inventor can submit a description of his or her invention to the PTO. Upon receipt, the PTO mails a notice with a serial number and date of receipt. The notice also includes a statement that a patent application should be diligently filed if patent protection is desired. The document is not a substitute for a patent application.
In spite of PTO's efforts to make clear the very limited purpose of a disclosure document, unscrupulous invention developers have misused this program. They do so by misleading inventors into believing that a disclosure document affords some form of protection.
Unscrupulous invention developers also misuse our design patent system by filing design applications in cases in which a utility patent application should be filed. Briefly, a design patent protects only the appearance of an item, while a utility patent protects the structure, composition, or function of an item. Thus, design patents are generally less expensive and easier to obtain. However, while a design patent is a very useful form of protection for a design, it will not provide the protection to which a utility invention is entitled.
In spite of their potential for abuse, the Disclosure Document Program and design patents serve valid purposes in our patent system. In fact, often the same inventors who are cheated by unscrupulous invention developers are those who benefit the most from easily accessed tools in the PTO.
Enforcement and education are key to combating the unscrupulous invention developer program without making access to our patent system more difficult. Thus, Project Mousetrap, a major law-enforcement sweep, also kicks off a targeted consumer education campaign.
With respect to enforcement, PTO investigates patent practitioners who allegedly work with unscrupulous invention developers. If we find they are violating PTO's ethics rules, they can be barred from practice before the PTO. In partnering with the FTC, we have cooperated in the cases against unscrupulous invention developers, facilitating FTC's enforcement efforts.
Education is perhaps even more important than enforcement, in that it prevents injury before it happens. The PTO is actively working with the FTC distributing FTC materials to our customers. In addition, the PTO provides speakers, articles, and brochures to educate inventors' groups throughout the country about our patent system and how to use it. The PTO also maintains a nationwide network for patent and trademark information through its Patent and Trademark Depository Libraries and a help line that responds to over 200,000 calls each year (703/308-4357). The PTO knows that putting information in the hands of inventors is critical to solving the unscrupulous invention developer problem.
Partnering with the FTC and other agencies to rid
our country of unscrupulous invention developers is one of our
top priorities. We will work with them toward this common goal.
by Maria Victoria Hernandez
A new exhibit opened in the PTO Museum on July 9 entitled "Three Part Harmony: Patents, Trademarks, and Copyrights in a Musical World."
Music is a part of our lives every day. It encompasses emotions, fear, joy, anger, passion, or anguish. It acts as an appropriate accompaniment to movies, plays, television shows, and it can act as background to our workday, an elevator ride, or a shopping excursion. Music can take us back to a particular time or place and help us remember the past. Music can have meaning, though sometimes we do not always notice it. Actually, music can sometimes be seen as merely an afterthought, but this exhibit will show that there is much more to musical intellectual property than we realize.
The exhibit examines the three forms of intellectual property-patents, trademarks, and copyrights-and how they play a role in music's history and the music industry. New inventions and improvements will be featured to represent patents. The trademarks are used to distinguish these products when they are ready to market. Trademarks are also utilized by record companies and performers on collateral products such as T-shirts, posters, and other such items. Copyrights are issued to protect musical compositions, performances, album artwork, liner notes, music videos, and any artwork on collateral products.
"Three Part Harmony" shows the evolution of music from Edison's phonograph to today. The exhibit features music boxes, a player piano, phonographs, records and turntables, the advent of radio and Muzak®, a Wurlitzer jukebox, and numerous musical instruments. The present and future of music is featured with compact discs, the electronic music synthesizer, and how computer technology now plays a role in the electronic synthesis of music.
One section of the exhibit is devoted to Les Paul, who is often referred to as the "father of the electric guitar." Paul began his career as a country and western singer and later worked as a jazz-pop performer. Many recognize the name Les Paul from the Gibson guitars bearing his name. However, few know of his many other significant musical inventions. Paul is responsible for inventing such musical advancements as sound-on-sound, the eight-track recorder, over-dubbing, the electronic reverb effect, and multi-track tape recording. His most famous invention is the solid body electric guitar.
"Three Part Harmony: Patents, Trademarks, and Copyrights in a Musical World" will run through December 1997.
No matter how young or old you are, September always seems to spark thoughts of academia and the school year. Perhaps you are embarking on that yearly school shopping expedition as you send your youngsters off to begin the next school year or preparing your young adult to leave the nest for the first time and begin college. Or, if you are like our forward-thinking PTO employees, you are contemplating selecting among professional development opportunities.
PTO University (PTO-U) is widely considered the first "corporate university" in a federal government organization. With last spring's graduating class of 86 from both degree and certificate, PTO-U now boasts a total of 114 graduates in just three short years.
Graduation is just one way to measure the accomplishments of PTO-U. When speaking of professional development, incremental gain is made by virtue of class attendance and complementary study. At the conclusion of the last semester, approximately 600 full-time PTO employees were enrolled in workplace college credit courses offered by the agency in partnership with George Washington University, Marymount College, Northern Virginia Community College, and Syracuse University. These numbers bode well for participation next year. PTO designs the curriculum with particular emphasis on developing employees' critical thinking and automation skills. Participating colleges and universities provide qualified instructors and academic accreditation. Students can earn certificates or degrees in Business Management, Legal Assisting, Office Systems Technology, Business Information Technology, and Advanced Public Administration and are often selected for promotions to better jobs, special assignments, details within the PTO, and service on special teams after graduation.
This truly innovative effort is cost-effective and life changing for our employees. It is an important investment that contributes to a better educated, more empowered, efficient, and competitive PTO. It serves well as a model for other federal agencies, particularly in this time of government re-invention.
Many of the skills PTO-U nurtures are skills PTO also craves. No one knows and understands the multiplicity of activities in which PTO engages as well as current PTO employees. Whether for the aforementioned specialties, or for other positions requiring highly skilled professionals, it makes great sense for the PTO to invest in its own talented, motivated workforce. Individuals in this agency are best suited to acquire the necessary fortes to fill new needs and carry this agency forward. Education invigorates and hones the great talent here at the PTO.
by Cathy English and Vickie Bryant
The PTO Transportation Survey results have been tabulated. Of the 5,028 surveys distributed to PTO employees, 2,248 forms were returned. In the survey world, this represents a remarkable response rate of 45 percent. This overwhelming response will help the Space Acquisition Office more adequately plan for PTO's future needs.
How do you travel to work?
The results show us that 50% of the employees who responded to this survey are early risers and reach the work site between 6:16 a.m. and 7:29 a.m., and depart the office between 5:00 p.m. and 6:00 p.m. (39%). The majority drive alone (51%), they do not stop on the way to work (71%), nor do they stop during their commute home (51%). Of those who do drive their own vehicles to work, most do not use their cars during the work day (52%). On average it takes 30 to 59 minutes for the majority to commute to work (46%) and the same amount of time to return home (48%). The most common route is via Interstate 395 (33%).
In addition to the survey responses, approximately 80 hand-written answers were received in response to the question, "On your most recent work day, how did you travel to work?" Several responded with a new term, "slug," which one employee defined as "the unregulated voluntary car-pool system which picks up at or near certain bus stops." Unlike the slow pace we usually associate with a slug, a slug rider may allow a car to ride in the HOV lane and thus speed up the commute.
Since 1989, the General Services Administration (GSA) and the PTO have been working together to initiate a procurement for a consolidated, long-term home for the PTO. On June 26, 1996, the PTO released a Solicitation For Offers to lease a new or rehabilitated building complex on a site in Northern Virginia in accordance with the Congressionally approved prospectus. According to the prospectus language, proximity to public transportation is at least as important as any other non-cost factor. Four offers met all the minimum requirements of Phase One of this facility acquisition and are currently preparing Phase Two proposals. The locations of the four proposed sites are shown on the map below. The transportation information that was obtained from this survey was used for two purposes: (1) it has been provided to the four offerors to help them develop their site Transportation Plans which will be submitted with their Phase Two proposals, and (2) it will provide information necessary for the consolidation Environmental Impact Study which must be completed for any real estate project of this size. As you can see, these survey results are a vital piece of information for planning our future facilities, and all of you who sent your surveys back have played an important role in helping to design a future office that meets all of our needs.
The General Information Services Division (GISD), located in Crystal Plaza 3, Room 2C02, is a division of Information Dissemination Organizations. GISD provides general information to our external and internal customers via telephone, written correspondence, walk-ins, e-mail, and soon-Internet e-mail! Staffers supply patent and trademark publications and information on PTO products and services.
GISD, formerly the Public Service Center(PSC), was established in February of 1983 to serve as a liaison between external customers and the Patent and Trademark Office. It offered a variety of services to customers after they had exhausted all means of attaining service through normal channels.
The PSC received approximately 21,000 calls per month with two lines of access, the INFO Line, and the Help Line, including Employee Locator assistance. Delay time-the elapsed time it took to answer a call-was five to ten minutes. At the end of 1983, a contract was awarded which was designed to handle the INFO Line calls using automated voice messages.
In late 1992, the Communication Network Team was established to look at the operation, benchmark best practices, recommend improvements, and re-define the organizational objectives of PSC/GISD. The outcome of the team's efforts was a marked improvement in the workstations and the telephone system used by Customer Service Representatives.
PSC/GISD re-focused its resources to provide excellent general information services to PTO customers and to transfer those with technical questions and/or problems to the appropriate point of resolution.
On February 15, 1995, GISD was officially formed and enhancements to technological systems and work processes for the employees and customers have continued. GISD was "on the RISE" and has become a state-of-the-art call center. GISD staff receives approximately 64,000 calls and distributes 29,000 informational items each month. An Automated Call Distribution system controls all in-house phone lines and a dramatically improved and expanded automated message system. Each employee is equipped with an automated telephone instrument with headset and a PC based customer record system which produces bar-coded mailing labels.
In September, 1995, Systems Integration, Inc.(SII) was awarded a contract to assist in GISD's improvement process. Eric Fukuchi, President and Don Rottman, Executive Vice President of SII have made tremendous contributions to the success of GISD in adopting call center industry practices.
GISD is in partnership with the Patent Assistance Center(PAC). PAC was created as an enterprise effort between the Patent Corps and the Information Dissemination Organizations in response to the needs of numerous customers who seek telephone assistance with complex, patent-specific questions.
Over the past two years, because of a great team effort and commitment to providing quality services to PTO customers, the organization has been recognized with the following awards:
The new Enterprise Call Center is being built around the General Information Services Division with upgrades and enhancements to the infrastructure which will bring call center practices to customer service areas all over the PTO. GISD will be undergoing construction in mid-summer to accommodate a new sophisticated telephone system and an Interactive Voice Response system. Employees are looking forward to having a knowledge base system with pop screens and automated tools on each individual's PC. In addition, GISD will soon be receiving and responding to Internet questions for patent and trademark information.
In summary, Wes Gewehr, administrator for Information Dissemination Organizations, had this to say: "I am delighted with all that's been accomplished in GISD in the past three years. We've come a long way from typewriters to PCs, a long way from obsolete key sets to a modern call director system, and a long way from hold times exceeding 10 minutes to answering calls routinely in about a minute. When considering the tremendous growth to over 750,000 customer contacts projected for this year, it's nothing short of miraculous. Recent customer survey results show that our customers are thrilled. I'm sure that the enterprise call center that we're now working on will be a major success for GISD, IDO, and PTO and will provide even better service for the one million customers that will be contacting us next year."
In the days of Homer, military victory depended in large part on the fighting skills and sheer physical strength and stamina of the individual combatants. Now, at the close of the 20th century, we have soldiers who bear little resemblance to the heroes of classical literature buried beneath the surface of the planet or cruising beneath the surface of the sea, awaiting orders to enter codes in a computer and turn keys which will unleash the death of thousands. For better or worse, technological advances and inventions have changed the conduct of war. From time to time, a new weapon is invented which turns established military strategy and the conduct of war on its head. The machine gun was such a weapon, and the story of its invention revolves around two American geniuses, John Browning and Hiram Maxim.
Born in Sangerville, Maine, Hiram Stevens Maxim was the pioneer trailblazer; he was the first to design and build a working automatic1 rifle (based on recoil operation) in 1884. Maxim had little formal education and had worked at a variety of jobs, including bouncer. His inventive talents produced the proverbial better mousetrap (it automatically reset itself each time it was sprung), an improved gas lighting machine, and a prototypical automatic sprinkler system like those in use today, and an electric light bulb. At the Electrical Exhibition in Paris, he realized that European nations were eager to make war on each other, and concluded that he could make a tidy profit selling automatic weapons to them. He brought some American machine tools to England, and began experimenting with the principles of automatic operation. He received a number of patents on automatic gun mechanisms, and soon produced his "first" prototype, based on recoil operation (the momentum of the gun barrel being thrown backward upon firing provides the energy for automatic operation). In 1884-1885, he simplified the design, and approached a British shipbuilding firm, Vickers, to manufacture the weapons. By the turn of the century, Maxim machine guns had shown their capabilities in demonstrations and in action (e.g. the Boer War). Maxim was knighted for his pioneering inventive efforts, but died in 1915, before military leaders fully appreciated the power of machine guns.
John Moses Browning was also a pioneer in the invention of the machine gun, originating the concept of gas operation for automatic weapons. Unlike Maxim, John Browning began his career as a gunsmith and designer. He was apprenticed to his father, a gunsmith, and patented several rifles manufactured by Winchester, including the '86 model and the '90 pump action rifle. He was aware of Maxim's recoil-powered automatic guns, but decided to experiment with using the energy of the hot propellant gases to power an automatic cycle. His first successful design was called the model 1895, nicknamed the "potato digger." His next design, the Model 1917, US patent #678,937 was a recoil-powered automatic gun like the Maxims. It was called Model 1917 because in that year, on the verge of entering the war in Europe, the Army found itself completely lacking in modern automatic weapons. In February, 1917, Browning performed a demonstration at Congress Heights for the benefit of the press, members of Congress, and various foreign representatives. He brought the recoil operated gun he patented in 1901, and also a gas-operated automatic rifle, the BAR. Both weapons were successfully demonstrated, and began production shortly before the war's end.
Browning's superior designs withstood the test of time; the Browning Automatic Rifle (or BAR as it was called by soldiers) was in continuous service from the end of WWI to the late 50s, and the Colt M-1911 automatic pistol was standard issue military sidearm for over half a century. In fact, from the 1920s to the 1950s, the US military relied almost exclusively on Browning-designed automatic weapons. The deadly power unleashed by Browning's and Maxim's machine guns would ultimately lead to the development of yet another terrible 20th century invention, the tank.
1 An automatic gun is one in which the energy required to perform all operations necessary for firing continuous rounds, including loading, ejection of spent cartridges, etc., is derived from the energy of the firing of the bullet.
NEXT MONTH, A SAN JOAQUIM VALLEY HARVESTER MANUFACTURER INVENTS AN "UNSINKABLE" TRACTOR, MAKING THE DEVELOPMENT OF THE TANK POSSIBLE.
The Toledo-Lucas County Public Library is one of five Patent and Trademark Depository Libraries (PTDLs) in the state of Ohio. While operational as a PTDL since 1934, it recently entered into a new relationship with the Detroit PTDL, the Great Lakes Patent and Trademark Center (GLPTC), located at the Detroit Public Library. GLPTC serves in partnership with the PTO as a regional center for enhanced intellectual property information service delivery. A new role for the Toledo PTDL is serving as the "Gateway to Ohio" for these expanded services.
The Toledo PTDL has traditionally provided many services to inventors, attorneys, and the general public including patent and trademark seminars and training sessions, continuing displays and exhibits, publicity materials, and access to a wide array of patent and trademark information and resources. New benefits derived from the linking of resources identified by Lisa Hoenig, Toledo PTDL Representative, and Celeste Burman, GLPTC Partnership Representative, include faster access to a larger collection of patent and trademark resources, reference sharing, increased availability of documents for document delivery, wider access to the Automated Patent System (APS), an expanded network of small business referrals and reduced cost to the end user obtaining patent and trademark information.
To further support and facilitate the "Gateway" concept in the Toledo area, Hoenig prepared the groundwork for the establishment of the Inventors Council of Toledo in 1995. Coordinating with George Pierce, President of the Inventors Council of Dayton, Hoenig developed the Inventors Council of Toledo as a Chapter of the Dayton inventors group. She has served as the Executive Vice President since the Toledo group's first meeting in October 1995, providing leadership and direction in partnership with the chapter president. The success of the Toledo chapter has been phenomenal with a continuing mailing list of over 200 and attendance at their monthly meetings averaging 50 attendees. Members attend monthly meetings hosted by the Toledo library and also receive a one-year subscription to the Inventors Council of Dayton's newsletter ideas! featuring activities and news from all five chapters of the Inventors Council of Dayton, the Zimmer Foundation's Entrepreneur Network including a monthly column from GLPTC, and a two-year subscription to Inventor's Digest.
The "Gateway" concept was formally introduced during seminars presented jointly with the Patent and Trademark Depository Library Program (PTDLP) in February. Over 50 inventors attended the monthly Council meeting to hear presentations provided by PTO staff. The following day a three-credit-hour continuing education seminar was attended by over 25 intellectual property attorneys from the Toledo area. PTO speakers included Louis Falasco, Cynthia Banicki, and Lois Boland. Other speakers included Celeste Burman, GLPTC, and John Squire and Dr. Earnest Weaver, Jr., of the Maumee Valley Historical Society. The library also provided professionally produced publicity materials and posters, "Inventing Toledo" historical displays exhibited during February through April, and a young inventors and science fair exhibit to support youth activities. Lisa Hoenig reported that the Toledo PTDL has experienced growth in library attendance and use of PTDL collections and services following recent publicity, especially in the areas of reference and use of the library as a patent and trademark resource and copy center.
A few of the specialized patent and trademark information resources available at the Toledo PTDL include access to commercial databases for U.S. patents; Derwent data for 30 patent issuing authorities since 1981; INPADOC listing patents issued from 56 countries and organizations; Chinese Patent Abstracts in English with patents published in the People's Republic of China since 1985; and Chemical Abstracts listing chemical and chemical engineering patents. The library also provides the full series of Cassis CD-ROM products normally available at PTDLs, two Cassis workstations, a USAPat Workstation, a fee-based APS Workstation, and Internet search facilities. The Toledo PTDL maintains copies of U.S. patents in various formats dating back to 1849.
The Toledo PTDL hosts a Web page at the address: www.library.toledo.oh.us/patent.html as a part of the Toledo-Lucas County Public Library's Web pages. A detailed description and summary of GLPTC's collection and services is available from their Internet Home Page at the address: www.detroit.lib.mi.us/glptc/ using the World Wide Web.
by Valerie Richardson
This month a new law goes into effect for all federal government agencies to promote improved government performance and greater public confidence through better planning and reporting results of federal programs. In essence, the law, a bipartisan effort, was enacted to promote good business practices throughout government. It goes by many names-"GIPRA, " "G-P-R-A," and the "Results Act." What this law has not been called is extraordinary. The Government Performance and Results Act of 1993 is just that-extraordinary.
Its uniqueness resonates from two major paradigm-shifting concepts: 1) managers must now plan, monitor, and be held accountable for performance; and 2) every federal employee must be aware of, and contribute to, the mission of their specific organizations.
The Act seeks to improve the efficiency, effectiveness, and public accountability of federal agencies as well as to improve congressional decision-making which naturally ties into financial management. Emphasis is placed on improved service delivery by requiring agencies to focus on results, service quality, and customer satisfaction. The Act both requires and encourages consultation with customers and Congress to gather customer and stakeholder feedback, input, and insight for the development of departmental strategic and departmental and bureau performance plans.
The Results Act has five major components: 1) five-year strategic plans [updated every three years], 2) annual performance plans; 3) annual performance reports [submitted six months after the close of the performance year]; 4) managerial accountability and flexibility waivers; and 5) performance budgeting. Since 1993, the government, via the Office of Management and Budget (OMB), has test piloted four of the five components of the Results Act to determine their usefulness and agency readiness. The General Accounting Office (GAO) and the National Academy of Public Administration (NAPA) have both conducted studies and issued reports on how the 72 agencies who participated faired under these pilot projects.
The PTO was one of 72 agencies that participated in the three-year pilot projects. As a pilot under the annual performance plan and report components, the PTO participated as one of two other Department of Commerce (DOC) bureaus (Bureau of the Census and National Technical Information Service) under an information dissemination umbrella. Although all three businesses (Patents, Trademarks, and Information Dissemination) participated, designation under the information dissemination umbrella was somewhat restrictive and narrowly focused, as it did not depict a true reflection of what the PTO (as a bureau) is charged to accomplish.
Although the driving force behind the Results Act is the development of a strategic plan, the PTO (by law) is not required to develop one. This component of the law applies to executive level agencies only. However, the PTO was ahead of the Act and developed its first strategic plan in 1989 and will continue to revise and use this plan as its navigational tool in guiding it toward the accomplishment of its overall mission. While the PTO will continue to develop its own strategic plans, the PTO is greatly involved at the departmental level in the development of the DOC strategic plan. The DOC draft strategic plan can be located on the Internet at http://www.doc.gov.
Under the direction of the Comptroller, the PTO formulated a PTO GPRA Matrix Team. This 25 member team was comprised of representatives from the Offices of Finance, Budget, Planning and Evaluation, Solicitor, Chief Information Officer, Center for Quality Services, Trademarks, Patents, Information Dissemination, Human Resources, and Comptroller.
The team began in May of 1995, and over a two-month period, a total of 190 senior and mid-managers, plus the matrix team were trained on the Results Act and performance measurement. Part of the team's charter was to revisit the current mission statement to determine its measurability and to provide facilitation services to assist the three major business areas with developing outcome-oriented performance goals and measurements that comply with the Act. The result was a preliminary list of intermediate outcome-oriented business goals. Each of the three major businesses have developed key office outcomes or macro performance goals, and support key business indicators (performance metrics).
Since the enactment of the Results Act there have been a number of new laws enacted which tie directly to the 1993 Results Act, all of which require some form of linking performance delivery with resources requested. The Office of the Comptroller has attempted to merge as many of these new requirements as possible. In the fiscal year 1995 Financial Statement and Office Review, pilot annual performance plans and subsequent performance report were included. During the formulation of the fiscal year 1998 OMB Corporate Plan the PTO included the preliminary list of performance goals and metrics. These were subsequently published in the fiscal year 1998 Commerce Budget-in-Brief. In the fiscal year 1999 Corporate Plan submitted to the Secretary, the PTO again included this list of preliminary performance data. The effort to include performance management as a part of the Planning, Budget, and Evaluation (PBE) process has been a joint effort among the Offices of Budget, Planning and Evaluation, Center for Quality Services, and the three business areas. Performance planning is now a part of the PBE process.
The NPR consortium study on performance measurement concluded that most practitioners (both public and private) of performance or strategic management systems agree that effective performance measurement systems take time: time to design, time to implement, time to perfect. Performance measurement must be approached as an iteractive process in which continuous improvement is a critical and constant objective. There are eight critical areas that need to be considered for successful implementation:
It has been challenging to keep pace and keep focused on implementation with so many changes occurring in the realm of financial and operational management. The Office of the Comptroller, in collaboration with the businesses and the Offices of Budget, Planning and Evaluation, and Center for Quality Services, are continually working to refine the preliminary performance goals and metrics to come up with the best mix of performance data that will provide a reflective gauge which will accurately and adequately measure PTO's progress in moving toward the accomplishment of its overall mission. In addition, this group is working to: 1) strengthen the links in the performance chain from bottom/up and top/down; 2) define common terminology; 3) standardize methodology calculations; and 4) built integrity into the automated systems that will capture this information.
by Thomas T. Gordon, Esq.
Mr. Gordon is a local patent attorney. The views presented in this column are not necessarily those of the Pulse or the Patent and Trademark Office. Comments may be sent c/o the Pulse, Office of Public Affairs.
In a recent issue of the Pulse (see March 1997), the story of the X patents was told. These are the patents that issued between the start of the patent system in 1790 and a major revision of the patent laws in 1836. Those patents were not numbered at their issuance, but have been assigned a number indicating their order, with a letter X before each number.
In 1836, the patent laws were amended to make several basic changes in the system. The registration of applications was abolished and a system of examination was ordered, and the office was required to keep a record of all patents issued. This recording system established the use of numbers and the issuance of Patent Number 1 on June 13, 1836. Within about 7 months after the issuance of Patent 1, the first anomaly occurred, the issuance of a patent on a Knitting Machine to John McMullen and Joseph Hollen, Jr., with the number 126 ½. Patents 126 and 127 exist. Why did this patent get this odd number? Was there a logical reason?
A more drastic change in the numbering sequence occurred in 1861. In that year, a new numbering sequence was started using the number 1 again, and continuing onward. Later in 1861, this system was stopped, and the office returned to the numbering system established in 1836. They were forced to renumber all of the patents that had been issued in early 1861. If one looks at these patents, you will see that the "new number" is listed first, and the number of the 1836 series is listed below. The MPEP (Manual of Patent Examining Procedure) for many editions carried a table for correcting these anomalous numbers. The 1861 system of numbering also applied to the design and reissued patents. What was the reason for changing of the numbering system in 1861? It is not known, but logic prevailed and the old system was re-established.
The use of fractions in the numeric system has reared its ugly head many times. Those patents have been termed the "fractional patent series." I was first introduced to this anomaly some years ago when I was actively prosecuting applications. I received a Office Action rejecting my invention based on U.S. Patent 2,712,152 ½. When I first read the cited rejection, I assumed that the ½ was a typo. Upon looking at the enclosed patents I found the patent, and learned it was not a typo. Upon questioning the examiner, he said, "It is a real patent. If you do not believe it, go to the microfilm files and look there!"
I discussed this numbering with examiners as well as other practitioners. Very, very few knew about them. I learned from a technical man of the PTO search room staff (now retired) that he had a list of some 30 fractional numbered patents, but was not complete. He showed me a card file which listed fractional patents, and I was amazed to learn that there existed patents with numbers using halves, quarters, eighths, and even a twelfth. Why was this done? No one I questioned knew any real answer.
One of the most logical answers I received was that a patent had been awarded to a man in his 70s who was quite ill and wanted to see the patent before he died. Could the Office issue the patent quickly? Perhaps this was the reason for some of the fractional numbers, but when I found 126 ½ and found it issued to joint inventors, that logic went somewhat out the window.
I assembled a list and a file of about 40 fractional patents. It should be noted that all of the fractional patents I located were on the microfilm in the Public Search Room.
The fractional patents raise questions other than their oddities in numbering. They are prior art, but they cannot be accessed in our computer systems. The systems allow only 7 or 8 spaces for the numbers to be entered, and how does one enter the fraction, when no fractional keys exist on the computer keyboard, or spaces to enter ½? There have been statements from our "experts" that all patents are in the data base, but how do we locate the fractional patents? If they cannot be located, then a computer prior art search may not be complete and true.
When the archive copies of the patents were brought to the PTO some years ago from their storage caves in Pennsylvania for digital scanning, I was told that the operators were quite surprised at the number of fractional patents they found. They did not specifically make a listing of them, as they had no reason to do so.
Let us hope that logic will prevail in the numbering system, and no more fractions, or decision to re-number, are tried again with out consideration of the problems created. Also, let us hope that the computer network can be modified to access the fractional patents, and help establish a data base of all numbered U.S. Patents.
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