What happens when an inventor picks a fight with the USPTO? GILBERT P. HYATT

What happens when an inventor picks a fight with the USPTO? GILBERT P. HYATT

A patent is a set of exclusive rights granted to the inventor of an new invention by a government.  In the United States the agency which issues patents is the United States Patent and Trademark Office.  To be granted a patent an inventor must file a patent application which demonstrates that the invention meets all the requirements established in United States patent law.

A patent on an invention is frequently the seed that grows into a profitable company.  A patent is no guarantee for financial success, but frequently financial success is based on a patent.  Inventors that experience financial success frequently file more patents to try to repeat the process that brought them prosperity.  The inventors use the knowledge they gained from their prior patent applications to optimize new patent applications.  Sometimes this works well, other times it can lead to headaches for both the inventor and the Untied States Patent and Trademark Office.

An example of a case which involves an inventor who has pushed the patent application process to its limit is GILBERT P. HYATT, v. UNITED STATES PATENT AND TRADEMARK OFFICE, 2017-1722 (C.A.F.C. 2018).  This case involves an inventor, Gilbert Hyatt, and his unorthodox patent applications.  Mr. Hyatt was named as an inventor on early microprocessor patents, which made him a very wealthy man.  After his early success Mr. Hyatt filed more than 400 patent applications before June 8, 1995. Due to Mr. Hyatt’s numerous amendments, those pending applications contained approximately 115,000 total claims as of August 2015. Each of these applications incorporates by reference, and claims priority from, numerous previously-filed applications dating back to the early 1970s. In October 2012, the Patent Office dedicated twelve full time patent examiners to the sole task of examining Mr. Hyatt’s applications. By 2015, that number had increased to fourteen.

Mr. Hyatt’s motivation for filing such complex patent applications was not discussed in the court filings, but it can be inferred he was trying to get a patent on everything he possibly could, rather than a discrete invention.  This strategy is generally frowned upon.

As the patent applications were rejected, Mr. Hyatt would file appeals to the Patent Trial and Appeal Board.  Appeal begin once the patent examiner’s answer to the applicants appeal is filed.  But there is no deadline for the patent examiner to file an appeal.  Mr. Hyatt’s appeals were effectively put in a black hole without an answer from the patent examiner.  In 2013, the United States Patent and Trademark Office issued a series of formal office actions, called “Requirements,” intended to accelerate examination of Mr. Hyatt’s claims.  The United States Patent and Trademark Office instructed Mr. Hyatt to limit his patent application to 600 claims per application, to identify the priority date of each claim and the disclosure section for each claim. After these requirements were put in place the United States Patent and Trademark Office re-opened the prosecution for 80 of Mr Hyatt’s patents under Manual of Patent Examining Procedure section 1207.04.  The reopening essentially required Mr. Hyatt to refile all the answers he had already filed earlier.  Mr. Hyatt filed a rule making petition to have Manual of Patent Examining Procedure section 1207.04 rescinded.  The United States Patent and Trademark Office refused to rescind the rule.

Mr. Hyatt then filed suit in the United States District Court for the District of Nevada to get section 1207.04 rescinded.  The District Court dismissed the case claiming it did not have subject matter jurisdiction.  Mr. Hyatt then appealed to the Court of Appeals for the Federal Circuit. The Federal Circuit found for the United States Patent and Trademark Office on different grounds, but reached the same result as the District Court.

The main lesson that can be learned from this case is that debating the United States Patent and Trademark Office on regulations is not an effective way to be granted a patent.

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