I am pleased to announce the addition of a new family member to this Blog: A USPTO disciplinary decision search engine and reader-friendly digest of USPTO disciplinary decisions. This feature can be found by clicking here or on the “PTO Discipline” tab beneath the IPethics & INsights banner.
Why A Search Engine
Why go through this effort? It all stems from my frustration trying to discern how the USPTO has handled, for disciplinary purposes, conduct that was arguably similar to conduct of my clients in a given case. That, in turn, begged a significant foundational question–how do I find the prior disciplinary decisions that may be similar to my clients’ situation out of the universe of published USPTO disciplinary decisions?
Unfortunately, this relatively straightforward task is infinitely more difficult than it sounds. Imagine going to a library to locate a particular book and finding that the only way the books are organized is by their publication date. So, in this library, if you want to identify all (or even one) of the books on a certain subject, you have to manually read through every single volume on every shelf in the library until you find what your looking for.
That, in a nutshell, is how USPTO disciplinary decisions are organized–by date.
The “library” in which the USPTO’s disciplinary decisions are collected is a page buried on the OED’s portion of the USPTO’s web site, in the so-called OED “FOIA Reading Room.” This collection of USPTO disciplinary decisions is not published by LEXIS, Westlaw, or any other computerized legal research service. The decisions themselves are “raw” PDF files. They are not cataloged or summarized in any searchable way. They lack annotation, synopsis, or summary.
So if you want to know how the USPTO decided a particular legal issue, or if you want to know what type of conduct warranted a particular type of disciplinary sanction, then the only way to get that information is to open every single PDF file of every USPTO disciplinary decision–and there are hundreds of source documents– manually. And then start reading.
How the Search Engine Works
I created USPTO Disciplinary Search Engine as a tool for electronically conducting filtered searches of the raw data (PDF files) contained in the USPTO’s OED FOIA Reading Room. In addition, I wanted to give readers an easy-to-read digest and summary of the disciplinary decisions themselves without the reader having to go through the trouble of mining this information from the PDF source documents.
The way the search tool works is simple. USPTO disciplinary decisions can be searched using up to three different filtering mechanisms: (1) the general type of misbehavior that was at issue (e.g., neglect, misrepresentations, etc.); (2) the procedural mechanism utilized in reaching the decision (e.g., a trial, a settlement, reciprocal discipline, etc.); and (3) the punishment imposed by the USPTO (e.g., a reprimand, a suspension of a particular time period, etc.).
So, for example, if you want to see all of the USPTO disciplinary decisions that resulted in a suspension of less than six months and were the result of a settlement agreement, you can click on the corresponding boxes in the “procedures” and “punishment” filters. The engine should locate the corresponding results, which will be displayed in reverse chronological order.
The content of what is published for each “hit” from the search includes a synopsis of the decision, a statement of facts, summary of the legal issues, the procedural mechanism employed, and the discipline imposed. The summary includes hyperlinks to the USPTO’s decision (taken from the FOIA Reading Room) as well as any related decisions, such as state court opinions rendered in reciprocal discipline matters or court records from related civil or criminal proceedings.
Work in Progress
One major caveat: this search tool is a work in progress. To date, I have digested and applied the filtering mechanism for all USPTO disciplinary decisions published since January 1, 2016. I will be regularly updating the summaries to reach back in time to disciplinary decisions from 2015, 2014, and earlier. This process is labor-intensive. Over the course of the next few months, I hope to have at least the last five (5) years worth of USPTO disciplinary decisions digested and included in the searchable database.
I hope you find this new search engine to be a useful tool.