There are many cultures, including those in Hungary, China, Japan, Korea, Singpore, and Vietnam, where the family name comes first and the given name comes after the family name. For example Park Geun-hye, the president of South Korea, is the daughter of Park Chung-hee. Park, the president’s first name, is her family name. Geun-hye, the president’s last name, is her given name.
Unfortunately all too often the USPTO doesn’t get this.
Today we received a Notice of Insufficiency from the USPTO in a newly filed entry into the US national phase from a PCT application. The PCT application names an inventor from an Asian country. The national-phase application is not yet public so I will use the name of the president of South Korea as an example.
The USPTO’s standard Declaration of Inventorship (form PTO/AIA/01) requires that the “LEGAL NAME OF INVENTOR” be typed on the form. If as in this example the inventor had been the president of South Korea, the Declaration would have shown “Park Geun-hye” as the legal name.
The USPTO’s standard Application Data Sheet (form PTO/AIA/14) specifies that the “Given Name” be typed in a first field on the form, toward the left margin. It specifies that the “Family Name” be typed in a second field on the form, toward the right margin. If as in this example the inventor had been the president of South Korea, the ADS would have shown “Geun-hye” as the Given Name and “Park” as the Family Name.
On this set of facts, today we received a Notice of Insufficiency from the USPTO identifying a supposed defect in the ADS:
the name of the inventor set forth in the inventor’s … declaration does not correspond to the name of the inventor [in the ADS].
In this Notice the USPTO states that we must prepare and file a corrective Application Data Sheet with strikethroughs and underscores showing the name correctly. Oh, and we must pay a $140 “processing fee” with this corrective ADS. Yes, the USPTO is saying (using the hypothetical name as an example) that we must hand in a corrective ADS listing “Park” as the Given Name and “Geun-hye” as the Family Name. If we do this, and pay the $140 penalty, the USPTO will release the application from DO/EO processing to be examined by the Examining Corps.
I telephoned the person who signed this Notice. Let’s call him “Mr. A”. I asked Mr. A to explain exactly what the problem was. He drew my attention to the Inventor Declaration. I’ll quote him word for word, substituting the name from our hypothetical example. “Look at the ADS”, he said. “It lists the first name as ‘Geun-hye’.” I said “no, it lists the Given Name as ‘Geun-hye’.” He said “yes, right, it lists the first name as ‘Geun-hye’. So now look at the Declaration.” We looked at the Declaration. He said “as you can see it lists the first name as ‘Park’.”
I said “the Declaration is correct. The inventor’s first name is ‘Park.'”
Mr. A sounded a bit puzzled, but then pressed on. “If the inventor’s first name is ‘Park’, which is what the Declaration says, then why does the ADS say that the inventor’s first name is ‘Geun-hye’?”
I tried a second time to point out that “Geun-hye” in the ADS was listed as the inventor’s “Given Name”, not the “first name”.
We went around and around a couple more times and I gave up. I phoned up his supervisor, reaching her voice mail. I left a detailed message, but have not heard back from the supervisor.
So what needs to happen next? What needs to happen next is that USPTO needs to retrain its people to avoid cultural insensitivity toward inventors from Hungary, China, Japan, Korea, Singpore, and Vietnam. If such an inventor, when asked by the USPTO to type his or her “legal name” into a Declaration, lists his or her family name first, then USPTO ought to respect this.
I’d guess that at least one-third of USPTO’s fee income comes from applicants in Hungary, China, Japan, Korea, Singpore, and Vietnam. This alone ought to suggest the need to respect cultures in which the first name is the family name.