USPTO and Asian family names

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 “familyPark 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.  family-a

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.

 

4 thoughts on “USPTO and Asian family names

  1. I’d be interested to see a follow-up post from you after you hear back from the supervisor. This is the kind of stuff I’ve been fighting over for years with the PTO.

    • One of my former clients was an immigrant from India and a prolific inventor. He became so sick and tired of this nonsense that he legally changed his name to transpose the family and given names.

  2. And what about the many inventors who come from Hispanic countries where the name is , where the convention (as I, Anglo – but not US-born – Caucasian, understand it) is: ? – I hope I have this right, meta-names are awkward?
    It’s not unreasonable that that the PTO should want (to the extent they’re available) unique inventor/assignor/assignee names.
    But the PTO should not assume that the world names people as .

  3. Wow. I say that not in response to the USPTO’s utter stupidity, incompetence and intransigence, which is de rigueur for OIPE (which I believe is now called “OPAP”). Nor do I say it because the PTO can’t get its head around the idea that in some countries, the family name is listed first: I’ve been living outside the US for 25 years, and I long ago concluded that the USA is the most parochial country in the world, generally having no appreciation for the fact that not everyone does things the same way as in the USA.

    No, I say “wow” because you actually succeeded in talking to someone in OIPE/OPAP. Whenever I’ve tried to talk to someone in the OIPE, I’ve found that the phone number for the “signatory” on the bottom of the OIPE/OPAP-originating form – which, BTW, I have to look for in the PTO’s employee locator, because it’s not given at the bottom of the form – isn’t a real phone numbers. I’ve come to suspect that those OIPE/OPAP jobs are usually contracted out (often to people who are just off the boat, some of whom may come from some of the countries you listed in your blog entry). My guess, and that of colleagues with whom I’ve discussed these things, is that the OIPE/OPAP trolls are paid by the piece, giving them no incentive to think and every incentive to send out as many of these inane notices as possible. And since the PTO collects fees for, and doesn’t bear the cost of wasted applicant, paralegal and attorney time for dealing with, this nonsense, the PTO has no incentive to end these practices that serve no constructive purpose. (For more of my ranting about OIPE/OPAP, see http://www.iliplaw.com/2015/03/does-anyone-know-the-name-of-the-head-of-opap.html or http://www.iliplaw.com/2014/12/which-one-washes-of-notices-to-file-corrected-application-papers-and-related-trivialities.html).

    As for the particular mole-man with which you spoke, did you try explaining it in the other direction, i.e. that the inventor’s family name is Park, which is what the ADS says? One would think that even an OIPE/OPAP contractor could understand that. Perhaps you could also point him to the wikipedia entry on surnames, where the “overview” explains:

    “In many cultures (particularly in European and European-influenced cultures in the Americas, Oceania, etc., as well as the Middle East, South Asia, and most African cultures), the family name is normally the last part of a person’s personal name. In some other cultures, the family name comes first. The latter is often called the Eastern order because Europeans are most familiar with the examples from East Asia, specifically Japan, China, Korea and Vietnam. The Eastern order is also used in Hungary, Romania and in parts of Africa. Since family names are normally written last in European societies (except in Hungary), the term last name is commonly used for family name, while in Japan (with vertical writing) the family name may be referred to as upper name…”

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