USPTO flip-flops on whether a patent application title reveals technical data

Can the title of a not-yet-published US patent application reveal technical data?  Read on to see the USPTO talks out of two sides of its mouth, reaching both a “yes” and a “no” answer to this question.

USPTO saying the answer is “yes”.  On May 6, 2016, the USPTO published a Federal Register notice 81 FR 27417 entitled Use of WIPO’s ePCT System for Preparing the PCT Request for Filing as Part of an International Application With the USPTO as Receiving Office.  The purpose of this Federal Register notice was to warn applicants and practitioners not to use WIPO’s ePCT system.  The problem, which was of USPTO’s own making, was that according to the USPTO’s interpretation of the USPTO’s foreign filing license rule, the grant by the USPTO of a Foreign Filing License (“FFL”) did not make it okay to “export” the title of an invention outside of the US to WIPO’s ePCT servers in Switzerland for the preparation of a ZIP file for uploading to RO/US:

As set forth above, a foreign filing license does not authorize the export of technical data into ePCT for generating a PCT Request and resulting zip file for filing as part of an international application with the RO/US. More specifically, to complete the PCT Request and generate the zip file, ePCT requires a title of the invention, which may contain technical data.

(Emphasis added.)  The USPTO’s Federal Register notice warned that to avoid criminal liability for an unauthorized export of technical data, the applicant or practitioner who was

… considering the use of WIPO’s ePCT system for preparation of the PCT Request for filing as part of an international application with the RO/US should consider contacting the Bureau of Industry and Security (BIS) at the Department of Commerce, the Directorate of Defense Trade Controls (DDTC) at the Department of State, or the National Nuclear Security Administration (NNSA) at the Department of Energy for the appropriate clearances where the international application may include technology subject to export controls.

(Emphasis added.)  I discussed the USPTO’s warning not to use WIPO’s ePCT system in a blog article dated October 29, 2016.  It took more than three years, but eventually the USPTO revised its Foreign Filing License rule so as to remedy the real or imagined flaw in the original Foreign Filing License rule that supposedly subjected the applicant or practitioner to risk of criminal liability for “exporting” the title of the invention by using ePCT to generate a ZIP file for filing in RO/US.  See my blog article dated October 4, 2020, entitled The USPTO does the right thing about ePCT.

Teflon.  The notion that a title of an invention might “contain technical data” is not idle.  Consider Dupont’s patent on Teflon.  As the alert reader already knows, Teflon is Dupont’s brand name for polytetrafluoroethylene, initialized as PTFE.  (See for example US trademark registration number 559331 (TSDR page) registered May 27, 1952, for the trademark “Teflon”.)   The alert reader will recall that US patent number 2230654 is entitled:

Tetrafluoroethylene polymers.

Claim 1 is:

Polymerized tetrafluoroethylene.

In the US patent application that issued as this US patent, the title literally disclosed the invention in its entirety.

The USPTO’s position is clear — a title can contain technical data, and indeed can disclose the entirety of an invention.  The USPTO’s Federal Register notice in 2016 warning filers not to use ePCT, and the USPTO’s Federal Register notice in 2020 walking back the warning to filers not to use ePCT, reiterate this position about the title of a patent application.

USPTO saying the answer is “no”.  And so things stood until February 5, 2024, when the USPTO rolled out its Assignment Center which replaced the legacy EPAS system for recording patent assignments.  In the legacy EPAS system, the filer was able to enter a US patent application number or a PCT application number into EPAS, and the result would be a recordation of an assignment against that US patent application number or a PCT application number.

The USPTO developers of Assignment Center interposed an extra step in the recordation process — after the filer entered a US patent application number or a PCT application number into Assignment Center, the USPTO software would attempt to “look up” that US patent application number or PCT application number in a USPTO system, and would display the title of the application.

The USPTO cannot claim not to have known about this defect in Assignment Center — the revelation of the invention title is set forth in USPTO’s Assignment Center Training Guide dated January 23, 2024 (quoted above right, archived here).

The decision by the USPTO developers to interpose this attempted lookup of the proposed US patent application number or PCT application number in the e-filing process has had two consequences for the patent community:

• • it made it impossible, in Assignment Center, to carry out a recordation against a PCT application number that had been filed in a Receiving Office other than the RO/US, and
  • it reveals the title of the application.

The USPTO rolled out its Assignment Center system on February 5, 2024, and later that same day, I warned the USPTO of these two consequences in this blog posting.

For the next seven weeks after the USPTO’s rollout of Assignment Center, any member of the public could see the title of anybody’s not-yet-published US patent application by the simple step of entering that application number into Assignment Center.

The USPTO quietly corrected this defect in its Assignment Center on March 29, 2024.

It then took another four weeks for the USPTO to publicly admit to the defect in Assignment Center.  See the USPTO’s April 27, 2024 Notice of Potential Erroneous Release of Patent Application Titles, which says:

You are receiving this notification because your application’s patent title may have been viewed during that time frame [February 5, 2024 to March 29, 2024] by individual(s) who lacked permission to do so.

Did USPTO’s mistake cause any harm to US patent applicants?  The Notice denies such harm, saying:

It is extremely unlikely that the title could disclose the invention …

So for those keeping score at home, in 2024, when it serves the USPTO’s goal of denying that its revelation of titles of not-yet-published US patent applications harms US patent applicants, the title is said to be unlikely to disclose the invention.  But back in 2016, when it served the USPTO’s goal of warning US filers not to use WIPO’s ePCT system, the title could disclose the invention.