## Facts

- Gerard filed two U.S. patent applications.
- Gerard’s applications became involved in an interference with an application filed by J. Oppenheimer.
- Oppenheimer’s application matured into an issued patent.
- Gerard’s applications were abandoned.
- After the abandonment, a petitioner (not the applicant) filed a request with the Patent Office seeking access to the Gerard application files.
- The petitioner stated that inspection was needed to address possible infringement questions in connection with the Oppenheimer patent.
- The matter came before the Commissioner of Patents on the petition seeking access to the abandoned application records.

## Issues

1. Whether the Patent Office should permit a private third party to inspect abandoned patent application files to address possible infringement of an issued patent.
2. Whether an abandoned application’s prior involvement in an interference with an application that later issued as a patent changes the abandoned application’s nonpublic status.
3. What showing is required for the Commissioner to authorize inspection of abandoned application materials outside Patent Office proceedings.

## Decision

- The Commissioner of Patents denied the petition requesting access to Gerard’s abandoned application files.
- The Commissioner treated abandoned applications as nonpublic Patent Office records unless disclosure is authorized under the governing rules or an established exception applies.
- The Commissioner concluded that the petitioner’s interest in evaluating possible infringement, without more, did not justify opening the abandoned files to inspection.
- The Commissioner further concluded that the prior interference did not, by itself, make Gerard’s abandoned applications available for public or third-party inspection after abandonment.

## Legal Principles

- Abandoned patent applications are generally maintained in confidence and are not open to third-party inspection unless disclosure is authorized by Patent Office rules or a recognized exception.
- The Commissioner may consider petitions for access, but the Patent Office’s role is not to provide abandoned-file access to aid private infringement disputes.
- An interference history with an application that later issues as a patent does not automatically convert the abandoned application file into a public record.
- A request grounded only in a private party’s desire to evaluate potential infringement is insufficient, standing alone, to overcome the default nonpublic treatment of abandoned application materials.

## Conclusion

In *In re Gerard*, the Commissioner of Patents refused a third party’s request to inspect Gerard’s abandoned application files, holding that abandonment kept the applications nonpublic and that neither the applications’ prior interference with Oppenheimer’s later-issued patent nor the requester’s asserted infringement-related need justified disclosure.


In re Gerard, 127 U.S.P.Q. 337 (1960)