You may recall the brouhaha back in the Reagan era when it was discovered that the Navy had purchased some very expensive ($600) toilet seats.
I remember comedian Emo Phillips around that time joking about his letter to the IRS, noting that the value of the paper clip he’d used to attach his check should cover any deficiency in his return, based on Pentagon spending figures.
Today, it appears the Army may have bought some much more pricey toilet paper to match the Navy’s purchase. How? By obtaining a patent that expired five years before its issuance.
Here's the relevant excerpts from the patent’s face:
U.S. Patent No.
Assignee: The United States of America as represented by the Secretary of the Army
Issued: October 20, 2009
Filed: December 10, 1996
Continuation of application No. 08/396,986…which is a continuation in-part of application No. 06/590,308, filed on Mar. 16, 1984, now abandoned…
Because this application was filed after June 8, 1995, its term is 20 years from the filing date of the earliest reference specifically referred to for a priority claim: March 16, 1984. In other words, this patent that issued today actually expired March 16, 2004 – five and half years ago. 35 U.S.C. Section 154(a)(2).
"But maybe there is Patent Term Adjustment available…" Nope. The application was filed prior to May 29, 2000. Nothing there.
"But maybe there is Patent Term Extension available under 37 CFR 1.701…" Nope. There was no interference, secrecy order, or appellate review. And even if it were available, it could only extend up to five years – to March 2009.
"But maybe there is an extension pending FDA approval of the vaccine under Section 156…" Nope. That would also be a maximum extension of five years under Section 156.
This patent is DOA. If anyone has a good explanation as to why prosecution of this patent was pursued, please share. (And note that if your answer is "to get the app published," there were other, less burdensome routes available, such as voluntary publication under 1.221.)
So let's see where your tax dollars went over the last five years in pursuing this stillborn:
- Four responses to non-final office actions
- Three responses to final rejections, including two RCEs
- Two Examiner interviews
- One terminal disclaimer filed
- One notice of appeal
- One appeal brief
- One petition to correct priority
- One issue fee payment
That's over $5,700 just in PTO fees. In this case, those fees are effectively a shifting of government funds from one entity to another. But it’s hardly an efficient use of resources. And I wouldn't be at all surprised if the Army spent three times this amount for the attorney's corresponding time.
And of course, there are several interesting and crazy twists:
- First, you did read that list correctly. The applicant filed a TERMINAL DISCLAIMER in May 2006 – a year after the patent had already expired –to obviate a double patenting rejection. That's like a baseball team staging a press conference to announce it's not exercising the option to keep the player who retired the year before.
- Second, the Army filed a petition in October 2007 to correct the priority claim to get around an obviousness rejection. The cited art was a PCT publication from overlapping inventors, and the petition corrected the priority claim to include the underlying 1991 U.S. application of that PCT app. That is a different app from the fatal 1984 application. But the petition clearly includes the chain going all the way back to the 1984 application, which appeared as a priority document in today’s patent app as originally filed. In other words, if it wasn’t apparent up to that point (hard to imagine), the Army filed a petition two years ago which on its face evidenced that any resulting patent would not be entitled to any term.
- Third, and perhaps most interesting, the priority claim to the 1984 reference may not have been even necessary. In the last of the final rejections, the Examiner noted explicitly that the 1984 application "do[es] not teach the specific CFA/I peptides employed in the vaccine and method of the instant claims. Accordingly, the priority date of the instant application is the filing date of its immediate parent, U.S. Patent Application 08/396,986, filed 3/01/95."
This raises a question: if an application is a continuation-in-part and none of its claims are supported by the ancestor application, should its term be determined by the date of that ancestor app? (Set aside that it makes no sense to file such a C-I-P…) I don’t think so. The language of the statute is clear that it is the “specific reference” to the earlier app that determines a patent’s term. Indeed, the Army could have disclaimed priority to the 1984 application and removed that specific reference. See MPEP 201.11 III(G) (which amazingly anticipated this type of post-GATT situation). But it looks like now they’d need to get it reissued. And the Army would probably be estopped from disclaiming priority earlier than April 1991, the date of the underlying PCT application. Would it take less than a year and a half to push a reissue through? And it doesn't feel right that the Army should serendipitously benefit from the examiner's unsolicited priority statement, either.
- Lastly, and true to form with common perception of government efficiency, care to guess what the Army did prior this patent's issuance? That's right: it filed a continuation application.
Sure, it's not Charmin. But really, how abrasive do you think that official U.S. Patent is? I'll trade you a couple paper clips for it...