USPTO Issues Patent to Fraud

Photo by Alex E. Proimos, licensed under Creative Commons 2.0

Photo by Alex E. Proimos, licensed under Creative Commons 2.0

This story is so embarrassing for the U.S. Patent & Trademark Office and the patent system, I almost don’t want to write about it.

You might remember that about a decade ago, a South Korean scientist, Hwang Woo-Suk, claimed to have cloned a human embryo. Then, it turned out that the work was a fraud, and a few years ago Hwang was fired and convicted of various crimes in South Korea.

And yet, he just got a U.S. patent on his work. That is, the work that didn’t exist.

According to the NY Times article, the USPTO knew about the fraud and issued the patent anyway. But it’s much worse than the Times article describes.

According to the prosecution history of the patent, the USPTO actually relied on an affidavit from Hwang in issuing the patent. And the affidavit was submitted four years after his conviction in South Korea for embezzling his research funding.

This is what happened: The examiner rejected Hwang’s application as not teaching how to perform the cloning technique Hwang claimed. That makes sense, because Hwang didn’t actually know how to do it — he’s a fraud.

But just last year, Hwang submitted an affidavit claiming that he had actually done the things the examiner cited, and giving his expert opinion that they were within the skill of an ordinary person in the art.

One might expect the examiner to respond with peals of laughter followed by throwing the affidavit in the trash. Nope.

The examiner accepted the affidavit and issued the patent.

Inventors submit such affidavits all the time, and the affidavits are presumed to be accurate. But this is hardly a normal situation.

Hwang is a known fraud, who admitted falsifying the results from the supposed invention that he was trying to patent!

I really don’t like to beat up on the USPTO. Most of the people there work hard and do their best.

But this is nothing short of staggering incompetence. Why would you accept an affidavit from an admitted fraud? And moreover, why would you accept his affidavit on the subject of his fraud? There is no excuse for this, no acceptable way to justify it.

Hwang should not have received a patent. He didn’t invent a real cloning technique, so there’s no invention to patent. And the USPTO certainly should not take Hwang’s word for anything relating to his patent application.

There’s a larger context to this, beyond just being a humiliation for the USPTO. We’re now getting almost daily op-eds warning against reform, telling us to be careful with the patent system. We’re told that there’s a delicate balance, a “patent ecosystem” that mustn’t be disturbed.

Really?

The USPTO knowingly issues a patent on an invention that doesn’t exist by taking the word of an admitted fraud, but we can’t risk breaking the patent system?

Color me skeptical.

Matt Levy

Image of Matthew Levy

Matt Levy is Patent Counsel at the Computer and Communications Industry Association, where he handles legal, policy advocacy, and regulatory matters related to patents and is lead blogger for CCIA’s Patent Progress.

Matt joined the CCIA in 2013 from the IP boutique Cloudigy Law, PLLC. He has also been an associate at Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP and at Hogan & Hartson LLP. He got first-hand experience in both patent prosecution and patent litigation, including defending clients against patent trolls.

  • David

    One of the other disturbing aspects of this story is the way defenders of the existing system have come out to say: hey, its no big deal, the patent is clearly worthless, and would be easily invalidated if asserted. SMH

    • Scott Grindrod

      Invalidated only if you have piles of money lying around to litigate it…

  • David

    Also, a few years after the fraud in question, a non fraudulent stem cell researcher really did come up with a viable cloning technique, and presumably filed a patent application. Does this fraud patent get a priority date over the later one? Despite the fact that the later patent is an actual invention and this one is. . . not.?

  • Scott Grindrod

    There are about 5000 different patents for what amounts to a toaster. They may be named things like “bread re-freshener”, but they are still just a toaster.

    I also know people at the PTO who review patents. My friend told me that he rejected a patent 12 times, but the PTO kept letting them resubmit and finally someone above him cleared the patent. Apple has more than a few patents like this (think rounded rectangle with a button at the bottom). Basically they have enough money to keep resubmitting until the examiner gives up and allows it.

  • Matt

    To be fair, I’m not sure any of the proposed reforms would address a situation like this, would it?