Sara
I guess most Patent Offices would prima facie treat any publication as
citable. I'm not sure of the background to these withdrawn patents
though. It seems as though they been withdrawn before grant, been
published by mistake, and then attempts have been made to correct the
mistake.
After all you can't really "unpublish" once the publication has appeared.
There is a precedent for certain patents, e.g. nerve gases, being
withdrawn after publication and attempts made to remove all trace of
them (for obvious reasons). I presume no-one has tried to cite them
afterwards.
Jim
Jim Calvert,
Senior Examiner - International Classifications,
UK Patent Office
Email: Jim.Calvert@patent.gov.uk
Tel. (0)1633 814748
Fax. (0)1633 814827
>>><Sara_K_Davis@sbphrd.com> 30/August/1999 02:00pm >>>
Ken Gural's comments are interesting, and his suggestion about treating
these documents as non-patentee prior art are reasonable with regard to the
USPTO. But what about non-US prosecution? For instance, how do EPO
examiners regard "withdrawn" US patents which published, can be
retrieved
from major databases, were indexed and abstracted, etc.? I would
assume
that if they constitute prior art, they could be a bar to granting an EPO
patent. Would someone from the EPO, or any other non-US patent office,
like to comment?
Sara Davis, SmithKline Beecham - US
---------------------- Forwarded by Sara K Davis/SB-OTHER/PHRD/SB_PLC
on
08/30/99 08:52 ---------------------------
patentec@patentec.com on 27-Aug-1999 19:26
To: PIUG-L
cc: (bcc: Sara K Davis/SB-OTHER/PHRD/SB_PLC)
Subject: Re: Withdrawn US patent numbers
US 5,057,872 to Saijo et al, listed as "Withdrawn" in the USPTO list, is
cited in no less than 17 later US patents, with 3 issuing just this year.
Apparently, this document was not "Withdrawn" very well.
During prosecution of these 17 cases, the US Patent Office presumably
sent
copies of this withdrawn document along with the prosecution rejections
to
unrelated applicants.
Instead of the current policy on withdrawn patents; would it make sense
to
consider documents that are inadvertently or incorrectly released to be
"published" ONLY as far as prior art against other, NON-PATENTEE
applications, but not to count as publications against applications of the
same patentee? In that case, there would be no need to try to
"round-up"
all published copies and pretend they were never seen by the public.
Those
"incorrectly released" documents could be freely distributed without
affecting the validity of future applications by that patentee.
Ken Gural
PATENTEC
patentec@patentec.com
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