Previous posts have discussed some of the ways the USPTO tries to deny FOIA requests, citing Exemption 6 for example. Another exemption the USPTO often cites is Exemption 7(A).  In one example where I was requesting certain public records, an appeal was required explaining why the USPTO FOIA Office’s refusal to disclose the requested records under FOIA Exemption 7(A) was not justified because patent examinations are neither the type of “law enforcement proceeding” contemplated by Exemption 7, nor was the alleged harm in disclosure posited by the FOIA Office realistic.

Restriction requirements (or election of species) are issued by the USPTO when the Examiner determines that there are multiple and/or distinct inventions claimed.  The results is that an Applicant is required...

A previous post illustrated the USPTO's use of Exemption 6 to deny FOIA requests and one reason why such reasoning is improper (i.e.,  that the requested documents did not meet the threshold for the type of information protected by Exemption 6). Here, some of the additional requirements of Exemption 6 are analyzed with regard to whether there is any protectable privacy interest in public patent applications, and whether the public interest in disclosure of such documents outweighs any privacy interest that may exist, if one exists at all.  

Unfortunately, most examiners never experience dealing with the USPTO as an inventor. However, there is at least one former examiner who is now an inventor and representing himself pro se before the Office with respect to an invention for a Handle for Tablet Computers.  So far, the inventor has had to use every bit of his 10 years of experience as an Examiner to deal with the idiosyncrasies of USPTO bureaucracy. 

Patent prosecution before the USPTO is governed by numerous rules that limit an Applicant's ability to take certain actions, such as amending the claims.  A Final Rejection severely limits an Applicant's right to amend, and thus sometimes there are disputes as to whether a rejection is properly made final.  

The National Inventor Hall of Fame inducts a class of inventors every year to honor their breakthrough inventions.  The inductees typically have far reaching inventions that have profound impacts on the world.  On one of my more recent visits to the museum, I was reading about one of the inventions honored at the museum and was struck by some of the issued claims, particularly in light of the Supreme Court’s Alice decision.

While many patent attorneys spend their career filing patent applications and office action responses with the USPTO, few take advantage of the fact that the USPTO is an administrative agency and thus bound by the Administrative Procedure Act and the Freedom of Information Act.  This post analyzes some of the FOIA denials I have received and lays out example arguments that can be used to appeal the USPTO’s denial.