Filing Applications For Absolutely Unpatenable Inventions??

by Steve Reiss (stevenreiss@scienbizippc.com)

Prior to filing a patent application, a patent search is sometimes (but by no means most of the times) commissioned by the inventor. These searches can uncover prior art references that evince potential unpatentability of the invention. The strength of the argument for unpatentability will vary with the quality of the references and often weed out some inventors from filing a patent application. 

However, while many inventors will decide not to continue; sometimes, the client may either not be of the opinion that the invention is at all unpatentable or want to file the application anyway. An inventor may want to file anyway, so they can mark their product "patent pending" to scare away potential competitors. Inventors may know, or be advised by their patent attorney, that between the non-provisional application sitting at the USPTO for a year or so waiting to be examined and then the prosecution dragged out for as long as the client is willing to fund it; this will indeed scare away some potential market entrants. Furthermore, as long as the client decides not to foreign file, non-publication can be requested. The public will have no clue as to the client's intentions. Filing as a provisional first, provides yet another year of patent pending without public disclosure of what is actually pending.

Is it ethical for a patent attorney to carry out this strategy for the inventor?

Under the current USPTO ethical code and 37 C.F.R. 11.18(b)(2), the answer would depend on whether such strategy would be for carrying out an "improper purpose" or to "cause unnecessary delay" and how aggressive (or conservative) the inventor's patent attorney is.

In 1897, well before enactment of the current (or actually any extensive) USPTO ethical code, and probably still strong guidance for the modern patent professional, was In re John Wedderburn and John Wedderburn & Co., 81 O. G., 159, Decisions Of The Commissioner Of Patents, p. 140 (1897), affirmed United States, ex rel. Wedderburn, v. Bliss, Secretary of the Interior, 81 O. G., 1783 (DC Supreme Court 1897), Decisions Of The Commissioner Of Patents. Wedderburn, is one of the earliest Patent Office disbarment decisions. While John Wedderburn and his company's actions spanned all manners of extreme wrongdoings, one of those company actions involved knowingly filing patent applications for unpatentable inventions. 

Although this aspect of the disbarment decision -again, I cannot emphasize enough at the moment Wedderburn's wide range of wrongdoings and evil practices- strongly relied upon client deception by Wedderburn, when justifying disbarment, the decision does provide general guidance for patent practioners on filing patent applications with the USPTO for inventions that have strong or absolute evidence of unpatentability.

Benjamin Butterworth, then-Commissioner of Patents (1896-98; his death), was no mere naive political appointee or patronage appointment; he knew about the: Patent Office, the patent system, patent policy and risks to the public, whether the risks were to society in general or patent applicants. After all, he was a former chairman of the U.S. House of Representative's Committee on Patents (1889-91). Butterworth, in his decision, wrote (p. 750) (emphasis added):

It is perhaps an open question whether an attorney may properly prepare and file an application for a patent for an invention which he believes to be unpatentable.

If the ground of his belief is such as amounts to an absolute certainty—as, for instance, in the Whitman case, in which the reference, patent to Cheney, No. 116,553, found by the respondents' search and reported to the applicant in the usual so-called "unfavorable report" letter, shows absolutely every feature of Whitman's invention—the attorney, in filing such an application, is false not only to his client, but is false in his duty toward this Office. That the attorney has a duty toward this Office as well as toward his client cannot be questioned. He is to assist the Patent Office in doing justice toward his client and justice toward the public. He cannot be a party to an attempt to secure a patent for what he knows to be old, an attempt to take from the public what has become public property, any more than he can permit the Office to refuse to his client the protection to which that client is under the law entitled.

There may be circumstances under which an attorney, even though he may believe—such belief not amounting to an absolute certainty—an invention to be unpatentable, may properly file an application for patent therefor, but this should never be done without the express direction of the client, given after it has been stated to him that the invention is believed to be unpatentable, and the reasons why it is believed unpatentable have been fully and clearly laid before him by the attorney. To deceive the client as to facts which negative patent ability, or by failure to clearly and definitely state the facts to allow the client to deceive himself as to such facts, does not show that "highest good faith". which is recognized by the respondents as "necessary and required" between attorney and client. It is nothing less than gross misconduct. 

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A biography of Wedderburn can be found here. Some extracts of highlights of the biography are:

• Of his early life and education, little is known other than by some means he obtained a license to practice law.
• Obviously a very canny lawyer and one looking “to make a fast buck,” he established the John Wedderburn Company with the apparent intent of using the Patent Office as his personal cash drawer.  By virtue of conning newspapers all across the country into running his ads at discount prices in exchange for “stock” in John Wedderburn & Co., he was able to tout his services, ... to a nationwide audience.
•  After collecting ... additional $20 to process the patent application, which in the vast majority of cases he never obtained, if the client seemed to be “a vein easily mined,” Wedderburn sent a letter informing the inventor as follows:  “We take pleasure in informing you that the Board of Awards has selected your invention for special merit and our name will appear on our Roll of Honor for last month for the Wedderburn prize.”   <Of course, there was no such award/prize/Board.

The Non-Existent Wedderburn Prize

• After disbarment, Wedderburn was 33 years old and out of work. "Despite being disbarred and disgraced", Wedderburn, decided to enter the DC liquor business, setting up John Wedderburn’s Pure Wines & Liquors at his old F Street address. By 1915, political connections may be the reason that in Wedderburn’s ability to practice patent law was restored.

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