[Patentpractice] Interesting notice from USPTO re data breach

[Carl Oppedahl]

On 4/29/2024 12:14 PM, Carl Oppedahl wrote:
> On 4/29/2024 9:20 AM, Patent Lawyer via Patentpractice wrote:
>> *Part II:*
>>
>> I have received at least 6 of these notices.
>>
>> What should I tell my clients?
>>
>> (Because I feel like writing another letter in my abundant free time!)
>>
> Here is what I wrote to one of our clients a few minutes ago ...
>
> Subject line includes "USPTO may have revealed your application title 
> to a third party"
>
> Body of email includes:
>
> Now the USPTO reveals that it may have revealed the title of your 
> patent application to some member of the public.  See the attached 
> Notice.
>
> Our title is "redacted".  Our application is scheduled to be published 
> on redacted, 2025.  I'd guess your reaction to this would be that the 
> title, taken alone, does not reveal the entirety of the invention.  Of 
> course the revelation of the title might nonetheless be of interest to 
> third parties who would thereby learn that the client is innovating in 
> this technical area.
>
> As you may see, the USPTO commits to "confirming that the disclosure 
> was erroneous and inadvertent".
>
> I am not able to think of any next step for the client to do about 
> this, other than waiting for the publication to happen around sixteen 
> months from now.
>
> Carl
>
It seems to me that the reaction to this data breach ought to be very 
much a matter of case-by-case consideration.

Imagine one extreme, where the case claims priority from something that 
has already been published.  Or, similarly, the case is a US national 
phase of a PCT that has already been published.  In such cases the 
revelation of the title would likely be a no harm no foul.  The 
revelation of the application number might, nonetheless, be of concern 
to the extent that it might reveal filing activity by the client that 
would otherwise not have been known to adversaries or competitors.

Yet another element of the case-by-case analysis would be tied to the 
title itself.  One extreme is the "tetrafluoroethylene polymers" case 
where the title literally reveals the invention. Another extreme is the 
innocuous title that reveals very little. "Method and apparatus for data 
transmission."  "Improved cat box."

In the case quoted above, the client is player number 3 or so in a 
fairly small world where player number 1 has infinite amounts of money 
to spend on making trouble for players 2 and 3.  Even the tiniest clue 
given to player number 1 about our client's filing activities would be 
unfortunate.  But my situation is that I think the CIO's notice to me is 
a "boy who cried wolf" situation.  I think it's highly likely that the 
CIO sent the notice to me not because any actual data logging by the 
USPTO revealed that some third party saw my client's invention title.  I 
think it's highly likely that the CIO sent the notice to me for no 
better reason than that I recorded an assignment during the breach period.

Yet another factor for the case-by-case analysis is the position in the 
time line for the US pub.  In the case I quoted above, the filing that I 
did claimed no priority and no domestic benefit.  So the US pub will be 
sixteen months from now.  It's sad to think of unnecessarily revealing 
something sixteen months early.  On the other hand if the case you are 
looking at is going to be published in a week, maybe that is not so sad.


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